By: Christopher Frerking (chris@ntknet.com)
`
`Reg. No. 42,557
`
`
`
`
`
`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`INTEL CORPORATION, GLOBALFOUNDRIES U.S., INC.,
`
`AND MICRON TECHNOLOGY, INC.
`
`Petitioners
`
`v.
`
`DANIEL L. FLAMM,
`
`Patent Owner
`
`CASE IPR2017-0281
`U.S. Patent No. RE40,264 E
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
`Claims 37-50 & 67
`
`
`
`
`
`
`
`
`
`
`
`Reg. No. 42,557
`
`
`
`
`
`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`INTEL CORPORATION, GLOBALFOUNDRIES U.S., INC.,
`
`AND MICRON TECHNOLOGY, INC.
`
`Petitioners
`
`v.
`
`DANIEL L. FLAMM,
`
`Patent Owner
`
`CASE IPR2017-0281
`U.S. Patent No. RE40,264 E
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
`Claims 37-50 & 67
`
`
`
`
`
`
`
`
`
`
`
`Inter Partes Review of U.S. Patent No. RE40,264
`IPR2017-00281
`
`
`TABLE OF CONTENTS
`
`Page(s)
`
`
`TABLE OF CONTENTS ...................................................................................... i
`TABLE OF AUTHORITIES ................................................................................ iii
`I.
`Introduction ........................................................................................... 1
`
`II. Overview of the ‘264 Patent .................................................................. 2
`
`III. The Prior Art .......................................................................................... 2
`
`A. Kadomura .................................................................................... 2
`
`B. Matsumura ................................................................................... 5
`
`IV. Ground 1 ................................................................................................ 6
`A. Neither Kadomura Nor
`Matsumura Teaches Element 37[b] ............................................ 6
`B. Neither Kadomura Nor
`Matsumura Teaches Element 37[f] ............................................. 7
`V. Grounds 2 and 3 ..................................................................................... 10
`
`VI. Ground 4 ................................................................................................ 10
`
`VII. Ground 5 ................................................................................................ 12
`
`VIII. Ground 6 ................................................................................................ 13
`A. Preamble ...................................................................................... 13
`B. Claim Element 37[a] ................................................................... 13
`C. Claim Element 37[b] ................................................................... 14
`D. Claim Elements 37[c], 37[d], 37[e], and 37[f] ............................ 14
`
`
`
`i
`
`
`
`Inter Partes Review of U.S. Patent No. RE40,264
`IPR2017-00281
`
`
`IX. There Would Be No Motivation to Combine
`Kadomura and Matsumura or Kikuchi and Matsumura ........................ 15
`A. There Would Be No Benefit
`from Such a Combination ........................................................... 15
`B. Matsumura Could Only Come
`Into Play Through Hindsight ....................................................... 16
`X. Dependent Claims ................................................................................. 17
`
`XI. Conclusion ............................................................................................. 18
`
`
`
`ii
`
`
`
`
`
`
`
`
`
`Inter Partes Review of U.S. Patent No. RE40,264
`IPR2017-00281
`
`
`TABLE OF AUTHORITIES
`Cases Page(s)
`
`Hartness Int’l Inc. v. Simplimatic Eng. Co.,
`819 F.2d 1100 (Fed. Cir. 1987)......................................................................... 17
`
`Kimberly Clark Corp. v. Johnson & Johnson,
`745 F.2d 1437 (Fed. Cir. 1984)......................................................................... 18
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398, 418 (2007) .................................................................................. 16
`
`Statutes Page(s)
`
`37 C.F.R. § 42.107 .............................................................................................. 1
`
`MPEP § 2142 .................................................................................................... 17
`
`MPEP § 2143.03 ............................................................................................... 18
`
`
`
`
`
`
`
`iii
`
`
`
`Inter Partes Review of U.S. Patent No. RE40,264
`IPR2017-00281
`
`Daniel L. Flamm, Sc.D., the sole inventor and 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
`
`Board decline to institute inter partes review on the instant petition because the
`
`petition fails to show a reasonable likelihood that any challenged claim is
`
`unpatentable.
`
`I.
`
`Introduction
`This is not the first challenge to the validity of the ‘264 patent through inter
`partes
`review. Lam Research Corp. sells tools used in semiconductor
`
`manufacturing to entities such as the Petitioners and Samsung Electronics Co., Ltd.
`
`Lam filed seven IPRs directed toward the ‘264 patent.1 Lam also commenced an
`
`action in the Northern District of California seeking a declaration that neither it nor
`
`its products infringe the ‘264 patent. For its part, Samsung Electronics Co., Ltd.
`
`filed two more petitions for inter partes review2 and Petitioners have now filed a
`
`total of four more petitions directed toward the ‘264 patent. That makes a total of
`
`thirteen petitions for inter partes review directed toward one patent, invented and
`
`owned by an individual, Dr. Daniel Flamm.
`
`The Board either declined to institute or instituted and then terminated, on a
`
`1 IPR2015-01759; IPR2015-01764; IPR2015-01766; IPR2015-01768; IPR2016-
`0468; IPR2016-0469; and IPR2016-0470
`2 IPR2016-01510 and IPR2016-0512.
`
`
`
`1
`
`
`
`Inter Partes Review of U.S. Patent No. RE40,264
`IPR2017-00281
`
`joint motion, each of the petitions for inter partes review filed by Lam. The Board
`
`instituted one petition filed by Samsung, IPR2016-1512, but declined to institute
`
`on the other, IPR2016-1510.
`
`The instant petition is directed toward independent claim 37 and all of the
`
`claims that depend from that claims. As demonstrated below, Petitioners fail to
`
`identify any combination of prior art that teaches all of the elements of claim 37
`
`and fail to demonstrate a motivation to combine the cited prior art references. For
`
`that reason, the Board should not institute inter partes review with respect to that
`
`claim or any claim that depends from that claim.
`
`II. Overview of the ‘264 Patent
`
`The invention set forth in the ‘264 patent provides a method “for etching a
`
`substrate,” including “a chamber and a substrate holder.” (Ex. 1001 at Abstract.)
`
`Multiple etching temperatures are employed; the change being “from a first
`temperature to a second temperature within a characteristic time period.” (Id.)
`
`While methods involving the use of various temperatures for manufacturing
`
`semiconductors were known in the art prior to the ‘264 patent, none of the prior art
`
`discloses a predetermined temperature change within a specific interval of time.
`
`III. The Prior Art
`
`A. Kadomura
`
`Kadomura teaches a cryogenic two-step etching treatment, wherein the
`2
`
`
`
`
`
`Inter Partes Review of U.S. Patent No. RE40,264
`IPR2017-00281
`
`etching is suspended between the first and second etches. During the suspension,
`
`the first etching gas is discharged and is replaced by a second etching gas for the
`
`second etching step. (Ex. 1005 at 6:36-44, 8:24-32, 10:4-6.) One of the benefits of
`
`this approach, according to Kadomura, is that the time required to discharge the
`
`first gas and replace and stabilize the second gas can be sufficient to allow
`
`simultaneously changing 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.
`
`(Ex. 1005. at 6:55-62 (emphasis added); see also id. at 7:22-30.)
`
`Kadomura teaches nothing about changing temperature within a preselected
`
`time period to process the film. The minimum time interval for the temperature
`
`change in Kadomura is wholly a function of the time it takes to evacuate the first
`
`gases and to introduce another feed gas after carrying out one etching process on a
`
`film and before commencing another. There would be no benefit from attempting
`
`to shorten the time for changnign the temperature, since gas changing dictated the
`
`required interval between etching steps.
`
`The objects of Kadomura cryogenic etching process were to attain “high
`
`accuracy and fine fabrication simultaneously, as well as . . . actually putting the
`3
`
`
`
`
`
`Inter Partes Review of U.S. Patent No. RE40,264
`IPR2017-00281
`
`low temperature etching technique into practical use.” (Ex. 1005 at 2:60-64.) By
`
`contrast, one of Dr. Flamm’s primary objectives was to increase throughput: “[the
`
`invention] overcomes serious disadvantages of prior art methods in which
`
`throughput and etching rate were lowered in order to avoid excessive device
`
`damage to a workpiece.” (Ex. 1001 at 2:11-14.) Kadomura’s technique—
`
`exhausting and replacing
`
`the gas between etches and using very cold
`
`temperature—resulted in relatively long intervals between etches, “about 30 sec.”
`
`(Ex. 1005 at 6:54, 8:42.) Dr. Flamm’s ‘264 patent, which is explicitly concerned
`
`with increasing throughput, teaches a time interval of “several seconds” (Ex. 1001
`
`at 19:8-12 & Fig. 10), a time reduction of multiple orders of magnitude. Here
`
`again, Kadomura teaches away from the ‘264 patent.
`
`The fact is, as petitioners essentially concede, that Kadomura does not teach
`
`changing substrate temperature “within a preselected time period to process the
`
`film.” (Pet. at 29.) The time period in Kadomura is not selected at all; it is
`
`minimally dictated by the time period required to evacuate the first gas from the
`
`vacuum chamber and introduce and stabilize the flow of 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.
`4
`
`
`
`
`
`Inter Partes Review of U.S. Patent No. RE40,264
`IPR2017-00281
`
`
`(Ex. 1005 at 6:55-62; see also id. at 7:19-30 and 8:43-50.)
`
`B. Matsumura
`
`Matsumura’s focus is the preliminary processing steps that are taken to
`
`apply a uniform film of resist onto a wafer prior to illuminating the resist to form a
`
`latent image, and developing the resist to create a pattern mask for further
`
`processing. It addressed the problem of controlling the heating and cooling during
`
`the “adhesion and baking processes” for applying the resist to semiconductor
`
`wafers; it does not teach anything about etching.3 (Ex. 1003 at 1:15-20, 4:56-59,
`
`Figs. 1 & 4.) Matsumura’s “resist processing system,” is depicted in the block
`
`diagram Fig. 4 as the box 40. (Id. at 4:56-59 and Fig. 4.) Specifically, it comprises
`
`a “Sender,” 41, for transporting the wafer to the “Adhesion Unit,” 42, which
`
`applies HMDS to the wafer to enhance the adhesion of the resist, the resist is
`
`applied by the “Coating unit,” 43, and then it is baked in the “Baking Unit,” 44.
`
`(Id.) The “Receiver unit,” 45, then forwards the wafer to an “interface (not shown)”
`
`which transfers the wafer to an external “exposure unit (not shown).” (Id. at 5:5-
`
`12 and Fig. 4.) The crux of the solution was to heat the wafer “by means of a
`
`conductive thin film in accordance with the information” in a stored recipe. (Id. at
`
`
`3 While Matsumura mentions etching in the list of other possible applications for
`his invention, he teaches nothing about etching and strongly suggests that he has
`not used his invention with any type of etching, let alone plasma etching. (Ex.
`1003 at 10:3-7.)
`
`
`
`5
`
`
`
`Inter Partes Review of U.S. Patent No. RE40,264
`IPR2017-00281
`
`
`3:10-11, 2:66-3:16, 3:17-51.)
`
`IV. Ground 1
`A. Neither Kadomura Nor Matsumura Teaches Element 37[b]
`
`The claim element denominated by Petitioners as 37[b] reads:
`
`the plasma discharge apparatus comprising: a substrate temperature
`control system comprising a substrate temperature sensor and a
`substrate temperature control circuit operable to adjust the substrate
`temperature to a predetermined substrate temperature value with a
`first heat transfer process; and a substrate holder temperature control
`system comprising a substrate holder temperature sensor and a
`substrate holder temperature control circuit operable to adjust the
`substrate holder temperature to a predetermined substrate holder
`temperature value with a second heat transfer process;
`
`(Pet. at 26.)
`The entirety of the second portion of 37[b]—i.e., “the plasma discharge
`apparatus comprising . . . and a substrate holder temperature control system
`
`comprising a substrate holder temperature sensor and a substrate holder
`
`temperature control circuit operable to adjust the substrate holder temperature to a
`
`predetermined substrate holder temperature value with a second heat transfer
`process”—is “interdependent.” As such, it cannot be treated as a separate element
`for prior art purposes. The Board held, in another context, “The claim language
`requires that these phrases are interdependent, and cannot be parsed into separate
`elements met
`individually.”
` (Lam Research Corp. v. Flamm, IPR2015-01759,
`Paper No. 7, at 17 (Feb. 24, 2016).)
`
`
`
`6
`
`
`
`Inter Partes Review of U.S. Patent No. RE40,264
`IPR2017-00281
`
`In that case, the Board denied inter parties review directed toward claim 13
`of this very ‘264 patent after criticizing Lam for attempting to improperly split the
`elements of claim 13 into unreasonably small phrases to justify its patchwork of
`prior art references, stating:
`In particular, we note that claim 13 requires that the thermal mass of
`the substrate holder is selected for a predetermined temperature
`change within a specific interval of time. The claim language requires
`that these phrases are interdependent, and cannot be parsed into
`separate elements met individually. In other words, the thermal mass
`must be selected in order to undergo a predetermined temperature
`change within a specific interval of time (for example, a change of
`10°C per minute).
`
`(Id.)
`
`While Petitioners do not explicitly parse the language, they do so silently, by
`necessary implication, when they rely on two disparate prior art references to teach
`this limitation. They concede that neither Kadomura nor Matsumura “individually”
`teaches the quoted element. The Petition argues that “Kadomura in view of
`Matsumura disclosed” this limitation. (Pet. at 27.) Puzzlingly, this combination is
`
`said to be supported by the expert’s declaration (Ex 1006 ¶¶ 141-147), which
`
`largely discusses a third, here unmentioned, prior art reference of Kikuchi.
`B. Neither Kadomura Nor Matsumura Teaches Element 37[f]
`
`The claim element denominated by Petitioners as 37[f], along with the
`
`preamble of claim 37, reads:
`
`
`
`7
`
`
`
`Inter Partes Review of U.S. Patent No. RE40,264
`IPR2017-00281
`
`A method of processing a substrate in the manufacture of a device, the
`method comprising:
`. . .
`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.
`(Pet. at 25, 35.)
`Petitioners, here again, are silently parsing the last seven words of this
`element—i.e., “within a preselected time period to process the film”—from the
`preceding words after the word “and”—i.e., “the substrate temperature from the
`selected first substrate temperature to the selected second substrate temperature.”
`This is impermissible as the entire clause is “interdependent.” As such, they
`cannot be treated as separate elements for prior art purposes.
`Neither Kadomura nor Matsumura, “individually,” teach the quoted claim
`limitation: “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.”
`Kadomura does not teach changing the temperature “within a preselected time
`period to process the film.” The time interval between etching is wholly dictated
`by the time it takes exhaust the first gas, introduce the second gas and stabilize the
`
`
`
`8
`
`
`
`Inter Partes Review of U.S. Patent No. RE40,264
`IPR2017-00281
`
`second gas. (Ex. 1005 at 6:36-44, 6:55-62,7:22-30, 8:24-32,10:4-6.) Thus, there is
`no preselected time period to process the film in Kadomura.
`Matsumura also does not teach “within a preselected time period to process
`the film,” or for that matter, even a time period to process the film. Ignored
`throughout petitioner’s discussion of 37[f] are these last four words, “to process the
`film.” Matsumura does not even have any film extant in the adhesion and coating
`units. The adhesion step precedes dispensing the constituents necessary to form a
`film and the baking step is the second part of a process for producing the nascent
`photoresist. There is no photoresist film until after the baking step.
`Although Petitioners do not mention the sole reference to etching in
`Matsumura in the five pages it directs to 37[f], perhaps they would contend that the
`reference to etching in Matsumura (Ex. 1003 at 10:3-7) papers over the absence in
`Matsumura of a teaching of “for processing.”
`Still further, the present invention has been applied to the adhesion
`and baking processes for semiconductor wafers in the above-
`described embodiments, but it can also be applied to any of the ion
`implantation, CVD, etching and ashing processes.
`(Id. (emphasis added).) This reference to etching is contained in what is often
`referred to as a “throw in the kitchen sink” assertion, suggesting, without any real
`data, that one’s invention may have all sorts of applications. Here, Matsumura, all
`but concedes he had no etching data, and thus had nothing to teach about etching,
`
`
`
`9
`
`
`
`Inter Partes Review of U.S. Patent No. RE40,264
`IPR2017-00281
`
`
`let alone plasma etching.
`Matsumura essentially confirms that the invention has not been applied to
`etching. The statement that the invention can be applied to etching is pure
`speculation; there is no enabling data and no teaching of etching.
`
`V. Grounds 2 and 3
`Petitioners rely on the same analysis for independent claim 37 as in Ground
`1. (Pet. at 49, 56.) Those Grounds must also fail for the same reasons.
`
`VI. Ground 4
`In this ground, petitioners combine a patent on ashing, Kikuchi, with a
`patent on adhesion and baking (Matsumura) to argue that a claim on etching (claim
`37) would have been obvious. There is no teaching of claim elements 37[a] or
`37[b].
`Kikuchi is tackling problems associated with removing, via ashing, the resist
`after the etching step is completed. He lays out his four objectives, the primary of
`which is to avoid explosions of the resist, for which he teaches using a low
`temperature. (Ex. 1004 at 3:16-30.) He then teaches using a higher temperature to
`remove the remaining resist.
`
`The claim element denominated by Petitioners as 37[a] reads:
`
`placing a substrate having a film thereon on a substrate holder within
`a chamber of a plasma discharge apparatus
`
`
`
`10
`
`
`
`Inter Partes Review of U.S. Patent No. RE40,264
`IPR2017-00281
`
`
`(Pet. at 58.)
`Petitioners essentially concede that neither Kikuchi nor Matsumura teach
`this element of claim 37. First, in their petition in IPR2017-0280 (filed the same
`day as this Petition), Petitioners basically admitted that Kikuchi does not teach this
`element:
`To the extent Kikuchi’s hot plate embodiment did not expressly teach
`
`heating the hot plate to heat the wafer to an initial etch temperature, it
`would have been obvious to a skilled person to do so.
`
`(Intel Corp. v. Flamm, IPR2017-0280, Paper No. 2, at 60 (Dec. 2, 2016) (emphasis
`
`added).)
`During ashing using the “initial etch temperature,” the “hot plate” is not used.
`Rather, the substrate is supported by multiple pins, as Kikuchi described: “a
`plurality of pins are provided inside the vacuum treatment chamber to support the
`substrate at a distance from the heating means by supporting the rear surface of the
`substrate.” (Ex 1004 at 3:56-59.) That actually teaches away from a heated
`substrate holder.
`For the same reason that prior art cannot be combined—interdependent
`claim language—as discussed above, the two portions of 37[b] separated by the
`word “and” are each individually interdependent. Accordingly, Petitioners must
`show that each portion of the conjunctive is taught by a single prior art reference.
`This, Petitioners do not attempt to do.
`
`
`
`11
`
`
`
`Inter Partes Review of U.S. Patent No. RE40,264
`IPR2017-00281
`
`Not only are they forced to argue that two references, Kikuchi and
`Matsumura, must be combined, but in confronting the fact that this combination is
`still deficient, they resort to unsupported conclusory contentions that the missing
`aspects of the combination would have been obvious to the skilled artisan, for
`example:
`• “Kikuchi in view of Matsumura disclosed wafer and substrate control
`systems . . . .” (Pet. at 62.)
`• “It would have been obvious to a skilled person to use Matsumura’s
`wafer stage 12 to improve Kikuchi’s tool.” (Id.)
`• “A skilled person would have included Matsumura’s stage 12 in
`Kikuchi’s tool for tighter temperature control . . . .” (Id.)
`• “It would have been obvious to a skilled person to use Matsumura’s
`programmable control circuit to control both the stage and the wafer
`temperature.” (Id. 63.)
`• “It would have been obvious to a skilled person to use Matsumura’s
`predetermined recipes and programmable control circuit in Kikuchi’s
`tool to adjust the wafer and stage to predetermined temperatures.” (Id.
`64.)
`In short, neither Kikuchi, Matsumura, nor any combination thereof teach
`each claim element 37[b].
`
`VII. Ground 5
`Grounds 5 relies on the same analysis for independent claim 37 as in Ground
`4 (Pet. at 76), and should be denied for the same reasons.
`
`
`
`12
`
`
`
`Inter Partes Review of U.S. Patent No. RE40,264
`IPR2017-00281
`
`
`VIII. Ground 6
`Preamble
`A.
`For Ground 6, Petitioners rely primarily on Moslehi to attack indepdent
`claim 37 and claims 47-48, which depend from claim 37. Moslehi, however, fails
`to make it past the preamble of claim 37, which reads: “A method of processing a
`substrate during the manufacture of a device, the method comprising.” (Pet. at 81.)
`Moslehi does not teach a method, it teaches an apparatus, specifically, as its
`informs:
`“LAMP-HEATED CHUCK FOR UNIFORM WAFER
`title
`PROCESSING.” Petitioner cites Moslehi at 1:9-15 to meet the preamble of claim
`37 (Pet. at 81), but it offers no explanation. The reason for the lack of explanation
`is clear; the cited portion of Moslehi does not teach the preamble of claim 37. The
`cited portion of Moslehi states:
`The present invention relates to microelectronic device processing and
`more particularly to a lamp-heated chuck with the ability to provide
`radio-frequency (RF) plasma enhancement for uniform semiconductor
`wafer processing that is useful in a wide range of single-wafer lamp-
`heated and RF plasma device processing applications.
`(Ex. 1010 at 1:9-15.) That is plainly not a method for processing a substrate during
`the manufacture of a device.
`B. Claim Element 37[a]
`Nor does Moslehi teach the claim element denominated by Petitioners as
`37[a], which reads: Placing a substrate having a film thereon on a substrate holder
`13
`
`
`
`
`
`Inter Partes Review of U.S. Patent No. RE40,264
`IPR2017-00281
`
`
`within a chamber of a plasma discharge apparatus. (Pet. at 81.)
`Petitioners again cite to the above quotation from Moslehi, but it does not
`say anything about placing a substrate on a substrate holder. For that, Petitioners
`turn to Oka which, like Moslehi, teaches nothing about a process for etching,
`instead it addresses the upstream process of applying an improved resist film on a
`substrate. According to Petitioners, “[i]t would have been obvious to a skilled
`person to process Oka’s wafer using Oka’s recipe in Moslehi ‘824’s tool.” (Pet. at
`82.) This makes no sense. Claim element 37[a] calls for a wafer with a film on it,
`so either Oka does not supply this element—because it is teaching a process of
`applying the film, not a post application process—or, if petitioners are referring
`Oka’s film after processing, then it is far from obvious why anyone would use
`Oka’s recipes on a processed wafer.
`C. Claim Element 37[b]
`This element requires, inter alia, “a substrate holder temperature sensor.”
`(Pet. at 83.) The Petition cites to three passages in Moslehi—4:40-45, 6:44-50 and
`10:1-9—none of which teach a substrate holder temperature sensor.
`D. Claim Element 37[c], 37[d], 37[e], and 37[f]
`Claim element 37[c] reads: “performing a first film treatment of a first
`portion of the film at a selected first substrate temperature.” (Pet. at 87.)
`Petitioners again invoke the use of Oka’s recipe on Moslehi ‘824’s tool as
`14
`
`
`
`
`
`Inter Partes Review of U.S. Patent No. RE40,264
`IPR2017-00281
`
`obvious, but offer no explanation as to why it would be obvious or what would
`motivate a skilled artisan to combine these disparate arts. It is not obvious why
`this would be obvious. Similar flaws can be found in Petitioners’ arguments with
`respect to claim elements 37[d], 37[e], and 37[f]. There is, simply, no basis to
`combine those prior art references.
`IX. There Would Be No Motivation to Combine
`Kadomura and Matsumura or Kikuchi and Matsumura
`As stated above, petitioners simply ignore their burden of proving
`motivation to combine the cited references. There are at least two good reasons
`why no motivation can be shown.
`A. There Would Be No Benefit from Such a Combination
`The primary object of Kadomura was to attain high selectivity and accuracy
`while “actually putting the low temperature etching technique into practical use.”
`(Ex. 1005 at 2:58-64.) “[T]he foregoing object can be attained,” according to
`Kadomura, by using his two step etching process, wherein the temperature of the
`specimen is changed between “the one step and the succeeding step.” (Id. at 2:65-
`3:5.) After the first step the first gas is exhausted and replaced by a second gas, in
`“a time equal with or more than the time required” to change the temperature. (Id.
`at 6:55-62.) As the skilled artisan would recognize, this is the essence of
`Kadomura’s invention. (See Ex. 1005 at 12:53-67.)
`
`
`
`15
`
`
`
`Inter Partes Review of U.S. Patent No. RE40,264
`IPR2017-00281
`
`What motivation would there be to try to incorporate Matsumura’s baking
`recipes in Kadomura? No time would be saved between the two etching steps, as
`Kadomura repeatedly teaches. (Ex. 1005 at 6:55-62, 8:43-50, 10:11-16.)
`Petitioners’ discussion of motivation (Pet. at 28-30, 39) contains a lot of words, but
`no “articulated reasoning.” The fact is, given Kadomura’s principal object and his
`solution, a skilled artisan would learn nothing from Matsumura that would be of
`any practical benefit to Kadomura.
`B. Matsumura Could Only Come Into Play Through Hindsight
`As the Board held in denying Lam Research Corp.’s petition in IPR2015-
`01766:
`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.
`(Lam Research Corp. v. Flamm, IPR2015-01766, Paper No. 7 (Feb. 24, 2016).)
`Petitioners’ attempt to rely on the solution to the problem rather than the
`problem itself, as discussed above, is impermissible hindsight. As expounded in
`the MPEP: “the examiner must step backward in time and into the shoes worn by
`16
`
`
`
`
`
`Inter Partes Review of U.S. Patent No. RE40,264
`IPR2017-00281
`
`the hypothetical ‘person of ordinary skill in the art’ when the invention was
`
`unknown and just before it was made.” MPEP § 2142. Obviously, at that point,
`
`before the invention was made, the skilled artisan would know only the problem,
`not the solution. Therefore, Petitioners’ reliance on Matsumura’s temperature
`recipes for use in the adhesion unit and the baking unit for applying a uniform
`resist on a substrate is impermissible hindsight. The MPEP further admonishes:
`“Knowledge of applicant’s disclosure must be put aside in reaching this
`determination,” and “impermissible hindsight must be avoided and the legal
`conclusion must be reached on the basis of the facts gleaned from the prior art.”
`MPEP § 2142.
`This is precisely what petitioners are not doing. Again, the problem—just
`before the invention was made—was how to increase etching throughput while
`maintaining selectivity. The only way that adhesion and baking temperature
`recipes enter the fray is by having “[k]nowledge of applicant’s disclosure,” which
`“must be put aside in reaching this determination.”
`
`X. Dependent Claims
`As shown above, Petitioners fail to show any basis to invalidate claim 37,
`which is the only independent claim challenged in this Petition. As a matter of law,
`
`the petition should also be denied as to all of the claims that depend from that
`
`claims. Hartness Int’l Inc. v. Simplimatic Eng. Co., 819 F.2d 1100, 1108 (Fed. Cir.
`17
`
`
`
`
`
`Inter Partes Review of U.S. Patent No. RE40,264
`IPR2017-00281
`
`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 same is true as to the remaining dependent claims.”); see also
`
`MPEP § 2143.03 (“If an independent claim is nonobvious under § 103, then any
`
`claim depending therefrom is nonobvious.” (citing In re Fine, 837 F.2d 1071 (Fed.
`
`Cir. 1988))).
`
`XI. CONCLUSION
`
`For the foregoing reasons, the instant Petition should be denied.
`
`
`Date: March 14, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`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
`
`
`
`
`
`18
`
`
`
`Inter Partes Review of U.S. Patent No. RE40,264
`IPR2017-00281
`
`
`CERTIFICATION OF WORD COUNT UNDER 37 C.F.R. § 42.24(d)
`
`Pursuant to 37 C.F.R. 42.24(d), the undersigned hereby certifies that the
`
`
`
`
`
`word count for the foregoing PATENT OWNER’S PRELIMINARY RESPONSE
`
`totals 4,120, excluding the cover page, signature block, and parts exempted by 37
`
`C.F.R. § 42.24(d).
`
`This word count was made by using the word count function tool in
`
`Microsoft Word software Version 2
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
