`By: Christopher Frerking (chris@ntknet.com)
`
`Reg. No. 42,557
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`
`
`
`
` Paper No. 5
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`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
`U.S. Patent No. RE40,264
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`
`
`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Patent Owner’s Preliminary Response under 37 C.F.R. § 42.107
`Inter Partes Review of U.S. Patent No. RE40,264
`
`
`TABLE OF CONTENTS
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`
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`Page(s)
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`
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`TABLE OF CONTENTS ...................................................................................... i
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`TABLE OF AUTHORITIES ................................................................................ ii
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`I.
`
`Introduction ........................................................................................... 1
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`II. Overview of the ‘264 Patent ................................................................... 2
`
`III. The Prior Art Referenced Does Not
`Teach a Preselected Time Interval ......................................................... 3
`
`A. Kadomura .......................................................................................... 4
`
`B. Matsumura ......................................................................................... 6
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`C. Combining Kadomura with Matsumura ............................................ 8
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`IV. Dependent Claims ................................................................................. 11
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`V. Conclusion ............................................................................................. 12
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`
`
`
`
`i
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`
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`Patent Owner’s Preliminary Response under 37 C.F.R. § 42.107
`Inter Partes Review of U.S. Patent No. RE40,264
`
`
`TABLE OF AUTHORITIES
`
`
`
`Cases Page(s)
`
`
`Beckson Marine, Inc. v. NFM, Inc.,
`292 F.3d 718 (Fed. Cir. 2002) .............................................................................. 10
`
`Hartness Int’l Inc. v. Simplimatic Eng. Co.,
`819 F.2d 1100 (Fed. Cir. 1987)............................................................................ 11
`
`Kimberly Clark Corp. v. Johnson & Johnson,
`745 F.2d 1437 (Fed. Cir. 1984)............................................................................ 11
`
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ............................................................................................. 10
`
`Lam Research Corp. v. Daniel L. Flamm,
`IPR2015-01766, Paper 7 (Feb. 24, 2016) ............................................................ 10
`
`
`Statutes Page(s)
`
`
`35 U.S.C. § 102 ...................................................................................................... 2
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`35 U.S.C. § 103 ...................................................................................................... 2
`
`37 C.F.R. § 42.107 ................................................................................................. 1
`
`
`
`ii
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`
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`Patent Owner’s Preliminary Response under 37 C.F.R. § 42.107
`Inter Partes Review of U.S. Patent No. RE40,264
`
`Daniel L. Flamm, Sc.D., the inventor and sole owner of the U.S. Patent No.
`
`RE40,264 (“the ‘264 patent”), through his counsel, submits this preliminary
`
`response pursuant to 37 C.F.R. § 42.107 and asks that the Patent Trial and Appeals
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`Board decline to institute inter partes review on the instant petition because the
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`petition fails to show a reasonable likelihood that any challenged claim is
`
`unpatentable.
`
`I.
`
`Introduction
`
`Samsung is not the first party to challenge the validity of the ‘264 patent
`
`through
`
`inter partes review.
`
` Lam Research Corp. sells tools used in
`
`semiconductor manufacturing to entities such as Samsung. Dr. Flamm has
`
`accused Samsung of using the tools it purchased from Lam and others in a manner
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`that infringes the methods claims in the ‘264 patent.
`
`In addition to commencing an action for declaratory judgment in the United
`
`States District Court for the Northern District of California, Lam asserted seven
`
`petitions for
`
`inter partes review of
`
`the ‘264 patent.
`
` See Case Nos.
`
`IPR2015-01759;
`
`IPR2015-01764;
`
`IPR2015-01766;
`
`IPR2015-01768;
`
`IPR2016-0468; IPR2016-0469; and IPR2016-0470. 1 The Board instituted trial
`
`on only two of those petitions, IPR2015-01764 and IPR2015-01768 and denied to
`
`
`1 A chart summarizing the claims of the ‘264 patent to which Lam’s seven
`petitions were directed is attached hereto as Appendix A.
`1
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`Patent Owner’s Preliminary Response under 37 C.F.R. § 42.107
`Inter Partes Review of U.S. Patent No. RE40,264
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`
`institute on the remaining five.
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`The instant petition is directed toward independent claims 27 and 37 and
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`several, but not all, claims that depend from those claims, i.e., dependent claims
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`31, 32, 34, 40, 41, 47, 48, and 50.
`
`In this petition, Samsung does not assert that any of the subject claims are
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`anticipated under 35 U.S.C. § 102. Instead, Samsung argues for obviousness
`
`under 35 U.S.C. § 103, and relies on combinations of four references, Kadomura,
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`Matsumura, Narita, Wang I, and Wang II. None of those references are new to
`
`the Board. None of those references are new to the Board in the context of an
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`attack on the ‘264 patent. Lam relied on Matsumura, Narita, and Wang II in
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`IPR2015-01766 and Lam relied on Kadomura and Wang I in IPR2016-0470.
`
`Both of those petitions were directed toward independent claims 27 and 37. The
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`Board declined to institute on either of those petitions.
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`Thus, in essence, Samsung has simply reshuffled the prior art references
`
`Lam has already used to attack claims 27 and 37 of the ‘264 patent. The Board
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`should reach the same conclusion in this petition as it did in IPR2015-01766 and
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`IPR2016-0470, and should not institute the instant Petition.
`
`II. Overview of the ‘264 Patent
`
`The invention set forth in the ‘264 patent provides a method “for etching a
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`substrate,” including “a chamber and a substrate holder.” (Ex. 1001, Abstract.)
`
`
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`2
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`Patent Owner’s Preliminary Response under 37 C.F.R. § 42.107
`Inter Partes Review of U.S. Patent No. RE40,264
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`Such change is “from a first temperature to a second temperature within a
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`characteristic time period.” (Id.) While methods involving the use of various
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`temperatures for manufacturing semiconductors were known in the art prior to the
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`‘264 patent, none of the prior art discloses a predetermined temperature change
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`within a specific interval of time.
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`III. The Prior Art Referenced Does Not Teach A Preselected Time
`Interval
`
`The first portion of the ultimate element of claim 27 reads:
`
`wherein substrate temperature is changed from the selected first
`substrate temperature to the selected second substrate temperature,
`using a measured substrate temperature, within a preselected time
`interval for processing . . . .
`
`(Ex. 1001 at 22:22-:28 (emphasis added).) Similarly, the ultimate element of
`
`claim 37 reads:
`
`wherein the substrate holder is heated above room temperature during
`at least one of the first or the second film treatments, and the substrate
`temperature control circuit is operable to change the substrate
`temperature from the selected first substrate temperature to the
`selected second substrate temperature within a preselected time
`period to process the film.
`
`(Id. at 23:14-20 (emphasis added).)
`
`The antecedent for “the” first and second substrate temperatures is
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`“etching . . . at a selected first temperature” and “etching . . . at a selected second
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`temperature” (claim 27); and “performing a first film treatment . . . at a selected
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`3
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`Patent Owner’s Preliminary Response under 37 C.F.R. § 42.107
`Inter Partes Review of U.S. Patent No. RE40,264
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`first substrate temperature” and “performing a second film treatment . . . at a
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`selected second substrate temperature” (Claim 37).
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`Samsung relies exclusively on Kadomura and Matsumura to satisfy the
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`“within a preselected time period” language of each of those claims. (Pet. at
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`27-30, 46, 55-56, 64-65.) Neither Kadomura nor Matsumura teach that the
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`required actions be performed “within a preselected time period.”
`
`A. Kadomura
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`Kadomura teaches a cryogenic two-step etching treatment, wherein the
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`etching is suspended between the first and second etches. During the suspension,
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`the first etching gas is discharged and is replaced by a second etching gas for the
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`second etching step. (Ex. 1006 at 6:36-:44; 8:24-:32; 10:4-:6.) One of the
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`benefits of this approach, according to Kadomura, is that the time required to
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`discharge the first gas and replace and stabilize the second gas allows sufficient
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`time to change the substrate temperature for the second etching step:
`
`In this case, since the series of operations described above, that, [sic]
`is a series of operations of interrupting discharge, exhausting
`remaining gases in the diffusion chamber 2 and, further, introducing
`and stabilizing a fresh etching gas take a time equal with or more than
`the time required for rapid cooling, the time required for the rapid
`cooling does not constitute a factor of delaying the time required for
`the etching treatment of the specimen W.
`
`(Id. at 6:55-:62; see also id. at 7:22-:30.)
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`4
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`Patent Owner’s Preliminary Response under 37 C.F.R. § 42.107
`Inter Partes Review of U.S. Patent No. RE40,264
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`Kadomura teaches nothing about controlling the time interval for changing
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`temperature. The time interval in Kadomura is dictated by his approach of
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`discharging the gas after the first etch and introducing and stabilizing a second gas
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`for the second etch. Accordingly, there would be no benefit from attempting to
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`control the time interval.
`
`Thus, Kadomura teaches away from claim 27 by requiring that the etching
`
`be stopped after the initial etch, in order to change the gas for the second etch.
`
`(Id. at 6:36-:44, 6:55-:62, 7:22-:30, 8:24-:32, 10:4-:6, and 12:51-14:14.) Claim
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`27, however, has no such limitation. Indeed, its first dependent claim, claim 28,
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`is specifically limited to a continuous etching process:
`
`28. The method of claim 27 wherein a continuous etching process
`comprises etching the first portion of the film and etching the second
`portion of the film.
`
`(Ex. 1001 at 22:29-:31.)
`
`The objects of Kadomura were to attain “high accuracy and fine fabrication
`
`simultaneously, as well as . . . actually putting the low temperature etching
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`technique into practical use.” (Ex. 1006 at 2:60-:64.) By contrast, Dr. Flamm’s
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`principal objective was to increase throughput: “[the invention] overcomes serious
`
`disadvantages of prior art methods in which throughput and etching rate were
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`lowered in order to avoid excessive device damage to a workpiece.” (Ex. 1001 at
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`2:11-:14.) Kadomura’s technique—exhausting and replacing the gas between
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`5
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`Patent Owner’s Preliminary Response under 37 C.F.R. § 42.107
`Inter Partes Review of U.S. Patent No. RE40,264
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`etches and employing very cold temperature—results in relatively long intervals
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`between etches, “about 30 sec.” (Ex. 1006 at 6:54, 8:42.) Dr. Flamm’s ‘264
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`patent, which is explicitly concerned with increasing throughput, teaches a time
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`interval of “several seconds” (Ex. 1001 at 19:8-:12, Fig. 10), a time reduction of
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`multiple orders of magnitude. Here again, Kadomura teaches away from the ‘264
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`patent.
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`The fact is, as Samsung concedes,2 that Kadomura does not teach changing
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`substrate temperature “within a preselected time interval.” The time interval in
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`Kadomura is not selected at all; it is dictated by the time that it takes to discharge
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`the first gas and introduce and stabilize the second gas:
`
`In this case, since the series of operations described above, that, [sic]
`is a series of operations of interrupting discharge, exhausting
`remaining gases in the diffusion chamber 2 and, further, introducing
`and stabilizing a fresh etching gas take a time equal with or more than
`the time required for rapid cooling, the time required for the rapid
`cooling does not constitute a factor of delaying the time required for
`the etching treatment of the specimen W.
`
`(Ex. 1006 at 6:55-:62; see also id. at 7:19-:30 and 8:43-:50.)
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`B. Matsumura
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`Matsumura does not provide the requisite preselected-time-interval vacancy
`
`
`2 Samsung admits, with respect to claim 27 that “Kadomura does not explicitly
`preselect the time interval during which the substrate temperature is changed” and
`that, with respect to claim 37, “Kadomura does not explicitly disclose that this
`temperature change occurs ‘within a preselected time period,’ as recited in claim
`37(i).” (Pet. at 27 and 46.)
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`6
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`Patent Owner’s Preliminary Response under 37 C.F.R. § 42.107
`Inter Partes Review of U.S. Patent No. RE40,264
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`left by Kadomura.
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`Matsumura’s focus is the preliminary processing steps that are taken to
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`prepare the wafer for etching. It addressed the problem of controlling the heating
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`and cooling during the “adhesion and baking processes” for applying the resist to
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`semiconductor wafers, not any etching or patterning. (Ex. 1007 at 1:15-:20,
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`4:56-:59, Figs. 1 & 4.) Matsumura’s “resist processing system,” is depicted in the
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`block diagram Fig. 4 as the box 40. (Id. at 4:56-:59 and Fig. 4.) Specifically, it
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`comprises a “Sender,” 41, for transporting the wafer to the “Adhesion Unit,” 42,
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`which applies HMDS to the wafer to enhance the adhesion of the resist, the resist
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`is applied by the “Coating unit,” 43, and then it is baked in the “Baking Unit,” 44.
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`(Id.) The “Receiver unit,” 45, then forwards the wafer to an “interface (not
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`shown)” which transfers the wafer to the “exposure unit (not shown).” (Id. at
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`5:5-:12 and Fig. 4.) The crux of the solution was to heat the wafer “by means of a
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`conductive thin film in accordance with the information” from a stored recipe. (Id.
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`at 3:10-:11, 2:66-3:16, 3:17-:51.)
`
`Matsumura also does not teach a time interval between a first etch
`
`temperature and a second etch temperature. Indeed, Matsumura does not teach
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`the use of etching with two different temperatures.
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`While Matsumura addressed the timing of certain events, those events are
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`not the time interval between use of a first temperature and a second temperature
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`7
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`Patent Owner’s Preliminary Response under 37 C.F.R. § 42.107
`Inter Partes Review of U.S. Patent No. RE40,264
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`in an etching process. Rather, those events are the time for temperature ramp up;
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`the time to hold the desired temperature; and the time to cool down the temperature.
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`Matsumura does not teach or even discuss a time interval between two selected
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`temperatures for etching, much less a “preselected time interval,” as recited in
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`claims 27 and 37 of the ‘264 patent.
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`Indeed, it is difficult to imagine what Matsumura would teach the skilled
`
`artisan on this point that he did not already know. Samsung cites Matsumura
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`solely for the “within a preselected time interval” element. (Pet. at 27-30, 46,
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`55-56, 64-65.) There must be thousands, if not millions, of teachings in a
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`multitude of fields from semiconductor processing to cooking dinner for this
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`truncated statement. Deconstructing the language for almost any invention or
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`idea will yield plenty of prior art. 3
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`C. Combining Kadomura with Matsumura
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`There are at least two technical reasons why it makes no sense to try to
`
`combine Matsumura’s temperature recipes with Kadomura.
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`First, Kadomura and Matsumura explicitly teach away from each other and
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`would not be combined by one of ordinary skill in the art. Kadomura teaches not
`
`to process anything during a temperature change. By contrast, Matsumura
`
`
`3 Energy (E), mass (m), and the speed of light (c2) were all well known before
`Einstein.
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`8
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`Patent Owner’s Preliminary Response under 37 C.F.R. § 42.107
`Inter Partes Review of U.S. Patent No. RE40,264
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`teaches a (thermal) processing is performed while the temperature is changing and
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`discloses an apparatus to control the time-temperature history curve thereof in
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`order to obtain improved results. It would have been apparent to a person of
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`ordinary skill that the object of Matsumura (controlling the time-temperature
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`history during change) would have no utility for Kadomura because Kadomura
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`teaches not to perform any processing when the substrate holder temperature is
`
`changing.
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`Second, it does not appear that Matsumura could be utilized in Kadomura’s
`
`system. Kadomura teaches a two-step etching system employing different plasma
`
`gases for each step; after the first etch, the first gas is discharged and the second
`
`gas is introduced. (Ex. 1006 at 6:36-:44; 8:24-:32; 10:4-:6.) The elapsed time
`
`for the temperature change between the first temperature and the second
`
`temperature is largely, if not wholly, a function of the time it takes to discharge the
`
`first gas and recharge the second gas. Accordingly, a skilled artisan would learn
`
`nothing useful from Matsumura’s “recipes.” Given the penchant among
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`semiconductor manufacturers to maximize achievable throughput, any skilled
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`artisan practicing Kadomura would seek to minimize the time to exhaust the first
`
`gas and introduce the second gas, and thus Matsumura could teach the artisan
`
`nothing about further reducing the time interval—much less providing a
`
`“pre-selected time interval for processing”—between the first and second
`
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`9
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`Patent Owner’s Preliminary Response under 37 C.F.R. § 42.107
`Inter Partes Review of U.S. Patent No. RE40,264
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`temperatures. Accordingly, the teachings of Kadomura and Matsumura suggest
`
`that such a combination would not be made, and there would be no reason for one
`
`of ordinary skill in the art to combine those references.
`
`As the Board wrote in denying one of Lam’s petitions directed toward, inter
`
`alia, claims 27 and 37 of the ‘264 patent:
`
`A showing of obviousness must be supported by an articulated
`reasoning with rational underpinning to support a motivation to
`combine the prior art teachings. KSR Int’l Co. v. Teleflex, Inc., 550
`U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
`2006) (“[R]ejections on obviousness grounds cannot be sustained by
`mere conclusory statements; instead, there must be some articulated
`reasoning with some rational underpinning to support the legal
`conclusion of obviousness.”)). As explained in KSR, “a patent
`composed of several elements is not proved obvious merely by
`demonstrating that each of its elements was, independently, known in
`the prior art.” Id.
`
`IPR2015-01766, paper 7 at 15.
`
`Neither Samsung nor its expert provides an articulated reason why the
`
`skilled artisan would combine Matsumura with Kadomura. In light of the
`
`significant differences between Kadomura and Matsumura, there would be no
`
`motivation to do so.
`
`In sum, Samsung fails identify any prior art that teaches a “preselected time
`
`interval” and, therefore, fails to meet its burden to show a likelihood of
`
`unpatentability of claims 27 or 37. Accordingly, there is no basis to invalidate
`
`that claim or any claim that depends from it. See Beckson Marine, Inc. v. NFM,
`
`
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`10
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`Patent Owner’s Preliminary Response under 37 C.F.R. § 42.107
`Inter Partes Review of U.S. Patent No. RE40,264
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`Inc., 292 F.3d 718, 727 (Fed. Cir. 2002) (holding that for claimed subject matter to
`
`be obvious either the prior art references must expressly reach each claim element
`
`exactly or else the record must disclose a reason for a person of ordinary skill in
`
`the art to modify the prior art teachings to obtain the claimed invention).
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`Moreover, even if Samsung had identified prior art to teach that element,
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`Samsung fails to offer articulate the rational underpinning to support a motivation
`
`to combine Kadomura with Matsumura. As a result, the Board should deny the
`
`instant petition, just as it denied Lam’s IPR2015-01766.
`
`IV. Dependent Claims
`
`The instant Petition is directed toward independent claims 27 and 37 in
`
`addition to several claims that depend from those claims, i.e., claims 31, 32, 34, 40,
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`41, 47, 48, and 50. Because, as shown above, Samsung fails to demonstrate that
`
`either independent claim 27 or 37 is rendered obvious, none of the claims that
`
`depend from those independent claims are anticipated or obvious despite any of the
`
`additional prior art references purported to relate to those dependent claims.
`
`Hartness Int’l Inc. v. Simplimatic Eng. Co., 819 F.2d 1100, 1108 (Fed. Cir. 1987)
`
`(“A fortiori, dependent claim 3 was nonobvious (and novel) because it contained
`
`all of the limitations of claim 1 plus a further limitation.”); Kimberly Clark Corp. v.
`
`Johnson & Johnson, 745 F.2d 1437, 1448-49 (Fed. Cir. 1984) (“We need consider
`
`no other claim because if the invention of claim 1 would not have been obvious the
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`11
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`Patent Owner’s Preliminary Response under 37 C.F.R. § 42.107
`Inter Partes Review of U.S. Patent No. RE40,264
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`same is true as to the remaining dependent claims.”).
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`V. CONCLUSION
`
`For the foregoing reasons, the instant petition should be denied.
`
`
`
`Respectfully submitted,
`
`
`By: /Christopher Frerking, Reg. No. 42,557/
` Christopher Frerking, Reg. No. 42,557
`
`174 Rumford Street
`Concord, New Hampshire 03301
`Telephone: (603) 706-3127
`Email: chris@ntknet.com
`
`Counsel for Daniel L. Flamm
`
`
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`12
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`Date: November 25, 2016
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`Patent Owner’s Preliminary Response under 37 C.F.R. § 42.107
`Inter Partes Review of U.S. Patent No. RE40,264
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R §42.6
`
`The undersigned hereby certifies that on November 25, 2016, Patent
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`Owner’s Preliminary Response under 37 C.F.R. § 42.107 for Inter Partes
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`Review of U.S. Patent No. RE40,264 was served on the following parties at the
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`indicated addresses via email:
`
`Naveen Modi
`naveenmodi@paulhastings.com
`
`Joseph E. Palys
`josephpalys@paulhastings.com
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`Chetan R. Bansal
`chetanbansal@paulhastings.com
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`/s/ Beata Ichou
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` Beata Ichou, Paralegal
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`13
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`Claim #
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`29
`30
`31
`32
`33
`34
`35
`36
`37
`38
`39
`40
`41
`42
`43
`44
`45
`46
`47
`48
`49
`50
`51
`52
`53
`54
`55
`56
`57
`58
`59
`60
`61
`62
`63
`64
`65
`66
`67
`68
`69
`70
`71
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`Samsung v. Flamm
`Appendix A
`IPR 2016‐0469
`IPR 2016‐0470
`IPR 2016‐0468
`IPR 2015‐01768
`IPR 2015‐01766
`IPR 2015‐01764
`IPR 2015‐01759
`'264 First Petition '264 Second Petition '264Third Petition '264 Fourth Petition '264 Fifth Petition '264 Sixth Petition '264 Seventh Petition
`
`(cid:23)
`(cid:23)
`(cid:23)
`(cid:23)
`(cid:23)
`(cid:23)
`(cid:23)
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`(cid:23)
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`(cid:23)
`(cid:23)
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`(cid:23)
`(cid:23)
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`(cid:23)
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`Not Instituted
`
`(cid:23)
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`(cid:23)
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`(cid:23)
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`(cid:23)
`(cid:23)
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`(cid:23)
`(cid:23)
`(cid:23)
`(cid:23)
`(cid:23)
`(cid:23)
`(cid:23)
`(cid:23)
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`(cid:23)
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`(cid:23)
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`(cid:23)
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`(cid:23)
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`(cid:23)
`(cid:23)
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`(cid:23)
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`(cid:23)
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`(cid:23)
`(cid:23)
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`(cid:23)
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`(cid:23)
`(cid:23)
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`(cid:23)
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`(cid:23)
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`(cid:23)
`(cid:23)
`(cid:23)
`(cid:23)
`(cid:23)
`(cid:23)
`(cid:23)
`(cid:23)
`(cid:23)
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`(cid:23)
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`(cid:23)
`(cid:23)
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