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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`
`
`APPLIED MATERIALS, INC.; INTEL CORPORATION;
`SAMSUNG ELECTRONICS CO., LTD.
`
`Petitioner,
`
`v.
`
`DEMARAY LLC
`Patent Owner.
`
`
`___________________
`
`Case IPR2021-001031
`Patent No. 7,544,276
`___________________
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`1 Intel Corporation has filed a petition in IPR2021-01030 and has been
`joined as a petitioner in this proceeding. Samsung Electronics Co., Ltd. has filed a
`petition in IPR2021-01090 and has also been joined as a petitioner in this
`proceeding.
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`11049031
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`TABLE OF CONTENTS
`
`Case IPR2021-00103
`Patent No. 7,544,276
`
`Page
`
`
`I.
`
`B.
`
`C.
`
`Hirose Is Not Prior Art ................................................................................. 1
`A.
`Petitioner Bears The Burden To Prove That Hirose Is Prior
`Art ....................................................................................................... 1
`Petitioner Misapplies The Rule-Of-Reason Analysis For
`Corroborating Evidence ..................................................................... 2
`Petitioner’s Scattershot Criticism Does Not Undermine
`Patent Owner’s Evidence Of Earlier Invention .................................. 4
`1.
`No Duplicative Testimony By Co-Inventors ........................... 4
`2.
`Alleged Inability To Recall Details ......................................... 4
`3.
`Alleged Deficiencies In Declaration Preparation .................... 5
`4. Who Conceived NBRFs (Reply 6-7) ....................................... 6
`5.
`Alleged Lack Of Personal Knowledge .................................... 6
`6.
`Notebooks ................................................................................ 7
`7.
`Claim Charts ............................................................................ 8
`8.
`Test Runs And Filter Schematics ............................................. 8
`(a)
`June 13, 2001 Run ......................................................... 8
`(b)
`Early July 2001 Run .................................................... 11
`(c) Mid-July Run ............................................................... 12
`(d) Dr. Zhang’s Hand-Drawn Filter Schematics ............... 12
`(e)
`7/18/2001 Filter Schematics ........................................ 14
`Summary ................................................................................ 18
`
`9.
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`TABLE OF CONTENTS
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`Case IPR2021-00103
`Patent No. 7,544,276
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`Page
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`The Petition Fails To Prove That Any Challenged Claim Is Invalid
`Based On Barber And Hirose ..................................................................... 19
`A.
`Prior Art Does Not Teach Advantage Of NBRF Over Other
`Filters For The Claimed Reaction Configuration ............................ 19
`Alleged Deficiency in Simulation Is Red Herring ........................... 23
`B.
`No Disclosure of Claimed Filter in Barber and Hirose .................... 24
`C.
`Petitioner Misunderstands The RF Coupling In Barber ................... 25
`D.
`Improper Incorporation By Reference ........................................................ 28
`
`II.
`
`III.
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`
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`TABLE OF AUTHORITIES
`
`Case IPR2021-00103
`Patent No. 7,544,276
`
` Page(s)
`
`Cases
`Arendi S.A.R.L v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) .......................................................................... 23
`
`Cooper v. Goldfarb
`154 F.3d 1321 (Fed. Cir. 1998) ............................................................................ 3
`E.I. du Pont De Nemours & Co. v. Unifrax I LLC,
`921 F.3d 1060 (Fed. Cir. 2019) ............................................................................ 2
`Fleming v. Escort Inc.,
`774 F.3d 1371 (Fed. Cir. 2014) .................................................................... 2, 3, 9
`Linear Tech. Corp. v. Impala Linear Corp.,
`379 F.3d 1311 (Fed. Cir. 2004) ............................................................................ 2
`Loral Fairchild Corp. v. Matsushita Elec. Indus. Co.,
`266 F.3d 1358 (Fed. Cir. 2001) ............................................................................ 2
`Mahurkar v. C.R. Bard, Inc.,
`79 F.3d 1572 (Fed. Cir. 1996) .............................................................................. 1
`Medichem, S.A. v. Rolabo, S.L.,
`437 F.3d 1157 (Fed. Cir. 2006) ............................................................................ 4
`Motorola Mobility LLC v. Intellectual Ventures LLC,
`IPR2014-00504, Paper 84 (PTAB, March 13, 2020) ......................................... 19
`Otsuka Pharm. Co., Ltd. v. Sandoz, Inc.,
`678 F. 3d 1280 (Fed. Cir. 2012) ................................................................... 21, 27
`Sandt Tech., Ltd. v. Resco Metal & Plastics Corp.,
`264 F.3d 1344 (Fed. Cir. 2001) .......................................................................... 19
`Singh v. Brake,
`222 F.3d 1362 (Fed. Cir. 2000) ............................................................................ 3
`South-Tek Sys., LLC v. Eng’g Corrosion Sols., LLC,
`748 F. App’x. 1003 (Fed. Cir. 2018) .................................................................. 27
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`Case IPR2021-00103
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`Square, Inc. v. Think Computer Corp.,
`CBM2014-00159, Paper No. 47, 2015 WL 7695141 (PTAB Nov.
`27, 2015) ............................................................................................................... 5
`Unigene Lab’ys, Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) .......................................................................... 20
`Statutes
`35 U.S.C. § 102(e)(2) ................................................................................................. 1
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`EXHIBIT LIST
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`U.S. Pat. No. 6,117,279 to Smolanoff et al.
`
`Declaration of Dr. Alexander Glew in Support of Patent Owner’s
`Preliminary Response
`
`Real Parties-in-Interest’s First Amended Preliminary Invalidity
`Contentions dated Feb. 12, 2021 in consolidated actions of
`Demaray LLC v. Intel Corp., 6:20-cv-00634-ADA (W.D. Tex.) &
`Demaray LLC v. Samsung Electronics Co., Ltd. et. al., 6:20-cv-
`00636-ADA (W.D. Tex.)
`
`Order Denying Motion for Preliminary Injunction, Dkt. 47, Applied
`Materials, Inc. v. Demaray LLC, 5:20-cv-05676-EJD (N.D. Cal.
`Dec. 23, 2020)
`
`Scheduling Order, Dkt. 33 in consolidated actions of Demaray LLC
`v. Intel Corp., 6:20-cv-00634-ADA (W.D. Tex.) & Demaray LLC
`v. Samsung Electronics Co., Ltd. et. al., 6:20-cv-00636-ADA
`(W.D. Tex.)
`
`EX2001
`
`EX2002
`
`EX2003
`
`EX2004
`
`EX2005
`
`EX2006
`
`U.S. Pat. No. 6,306,265 to Fu et al.
`
`EX2007
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`EX2008
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`EX2009
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`EX2010
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`EX2011
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`EX2012
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`EX2013
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`RESERVED
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`Declaration for Pro Hac Vice Admission of Darish Huynh Under
`37 C.F.R. § 42.10(c)
`
`Declaration of Dr. Alexander Glew in Support of Patent Owner’s
`Response
`
`Figures
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`MDX Sparc-Le 20 User Manual
`
`Laboratory Notebook of Dr. HongMei Zhang
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`Laboratory Notebook of Mr. Mukundan Narasimhan
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`- v -
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`EX2014
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`Case IPR2021-00103
`Patent No. 7,544,276
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`Copy of “BRPDC first reduction to practice notebook pages and
`data sheets”
`
`EX2015
`
`Excerpt of a laboratory notebook by Dr. Richard E. Demaray
`
`EX2016
`
`EX2017
`
`EX2018
`
`EX2019
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`EX2020
`
`EX2021
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`EX2022
`
`EX2023
`
`EX2024
`
`Deposition transcript of Dr. Vivek Subramanian dated August 24,
`2021
`
`Deposition transcript of Dr. Vivek Subramanian dated August 25,
`2021
`
`Deposition transcript of Mr. Michael Stowell dated August 13,
`2021
`
`Declaration of Dr. HongMei Zhang in Support of Patent Owner’s
`Response
`
`Declaration of Dr. Rajiv Pethe in Support of Patent Owner’s
`Response
`
`Claim Construction Order in W-20-CV-00634-ADA & W-20-CV-
`00636-ADA
`
`Defendants’ Sur-reply Claim Construction Brief in W-20-CV-
`00634-ADA & W-20-CV-00636-AD
`
`JP2002-43286A to Hirose
`
`PowerPoint presentation entitled “PVD Process and Materials
`Technology for Electro-Optic Integration” dated April 3, 2002
`
`EX2025 Werbaneth, P. et al., “Pt/PZT/Pt and Pt/Barrier Stack Etches for
`MEMS Devices in a Dual Frequency High Density Plasma
`Reactor,” 2002 IEEE/SEMI Advanced Semiconductor
`Manufacturing Conference
`
`EX2026
`
`EX2027
`
`Garcia, M., “Designing Planar Magnetron Cathodes: Analysis and
`Experiment,” Abstract
`
`Lieberman, M. A. et al., “Principles of Plasma Discharges and
`Materials Processing,” John Wiley & Sons, Inc. (1994)
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`IPR2021-00105 Petition for Inter Partes Review of U.S. Patent No.
`7,544,276
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`Deposition transcript of Dr. Vivek Subramanian dated January 4,
`2022
`
`EX2028
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`EX2030
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`I.
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`Case IPR2021-00103
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`Hirose Is Not Prior Art2
`A.
`Petitioner Bears The Burden To Prove That Hirose Is Prior Art
`Published after the priority date of the ’276 patent, Hirose could qualify as
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`prior art solely under pre-AIA 35 U.S.C. § 102(e)(2). EX1001, cover; EX1006
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`(item 62), cover (item 45). Petitioner therefore must establish that the “application
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`for [Hirose] patent” was “before the invention by the applicant for [the ’276]
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`patent.” Pre-AIA 35 U.S.C. § 102(e)(2); cf. Mahurkar v. C.R. Bard, Inc., 79 F.3d
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`1572, 1576 (Fed. Cir. 1996) (discussing the requirements for prior art for similarly
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`worded 102(a)).
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`In Mahurkar, the Federal Circuit explained that after a patent owner comes
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`forward with evidence “to show that [they] invented the subject matter of the
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`patent before” the asserted prior art, the challenger “bears the burden of persuasion
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`on the status of the [asserted reference] as prior art.” Id., 1577-78. In particular,
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`Petitioner “must persuade the [factfinder] that its version of the facts is true.” Id.,
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`1578. The question is thus not whether Patent Owner has shown that the inventors
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`had invented before Hirose, but whether Petitioner can prove that Hirose invented
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`before the inventors such that Hirose would qualify as prior art. Contra Reply 2-
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`23 (Petitioner applying the wrong standard of evidentiary burden).
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`2 All emphases are added unless otherwise noted.
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`B.
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`Petitioner Misapplies The Rule-Of-Reason Analysis For
`Corroborating Evidence
`Under the flexible rule-of-reason analytical framework, “[c]orroborating
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`evidence may take many forms,” including “records made contemporaneously with
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`the inventive process,” “[c]ircumstantial evidence of an independent nature,” and
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`“oral testimony from someone other than the alleged inventor.” Linear Tech. Corp.
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`v. Impala Linear Corp., 379 F.3d 1311, 1327 (Fed. Cir. 2004).
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`Corroborating evidence need not “constitute[] definitive proof of [the
`
`inventor’s] account or disclose[] each claim limitation as written.” Fleming v.
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`Escort Inc., 774 F.3d 1371, 1377 (Fed. Cir. 2014). Instead, the rule is that
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`evidence “as a whole, makes credible the testimony of the … prior inventor with
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`regard to conception and reduction to practice of the invention as claimed.” Id.;
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`see also E.I. du Pont De Nemours & Co. v. Unifrax I LLC, 921 F.3d 1060, 1076-78
`
`(Fed. Cir. 2019) (“[O]ur case law does not require that evidence have a source
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`independent of the inventors on every aspect of conception and reduction to
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`practice,” because such a rule would be “the antithesis of the rule of reason.”).
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`Corroborating evidence also need not be in writing: “the inventor’s
`
`testimony must be sufficiently corroborated by independent evidence, but not
`
`necessarily documentary evidence.” Loral Fairchild Corp. v. Matsushita Elec.
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`Indus. Co., 266 F.3d 1358, 1363-65 (Fed. Cir. 2001) (emphasis in original). In
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`Cooper v. Goldfarb, the Federal Circuit found sufficient corroboration based on
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`co-workers’ testimony that the inventor told them about his reduction to practice
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`and that they had seen him obtain materials of the type necessary to practice the
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`invention. 154 F.3d 1321, 1330 (Fed. Cir. 1998). In Fleming, documentary
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`evidence that did not definitively prove the inventor’s account nevertheless
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`sufficiently corroborated the story by showing experimental data and industry’s
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`interest in the idea. 774 F.3d at 1377. Hence, contrary to Petitioner’s insinuation,
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`the law does not demand that notebook pages be contemporaneously witnessed or
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`provide verbatim corroboration. Singh v. Brake, 222 F.3d 1362, 1369 (Fed. Cir.
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`2000) (“[I]n some cases, conception may be proved solely on the basis of
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`laboratory notebook entries witnessed subsequent to their entry.”) (citations
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`omitted).
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`Here, Patent Owner provided testimony from the first named inventor Dr.
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`Zhang (EX2019) showing conception and reduction to practice. Dr. Zhang’s
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`testimony is corroborated by testimony from non-inventor Dr. Pethe (a process
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`engineer who operated the reactors at issue, EX2020) and documentary evidence
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`(including contemporaneous records of lab notebooks, filter schematics, and SCI
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`test results, presentation dated nearly 20 years ago, and the patent application and
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`file history). Petitioner has presented no evidence that contradicts these material
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`facts, even though it has access to Mr. Weisse who made the filters at issue per the
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`inventors’ instruction. Petitioner has not established that its version of the story—
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`that is, Hirose invented before the inventors—is the more likely one.
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`C.
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`Petitioner’s Scattershot Criticism Does Not Undermine Patent
`Owner’s Evidence Of Earlier Invention
`1.
`No Duplicative Testimony By Co-Inventors
`Testimony by other inventors is unnecessary because co-inventors’
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`testimony “cannot be used to help corroborate the testimony of another [inventor].”
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`Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1171 (Fed. Cir. 2006). Petitioners’
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`unfounded speculation (Reply 3) is not evidence and does not contradict the
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`timeline of invention verified by Drs. Zhang and Pethe. Given Petitioner’s burden
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`to prove that its version of the story is the correct one, presumably Petitioner would
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`have submitted contrary evidence if it had any. Instead, it attempted to muddy the
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`water by relying on incorrect legal standards and wrong burden of proof.
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`2.
`Alleged Inability To Recall Details
`Petitioner alleges that Drs. Zhang and Pethe could not recall many details.
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`Reply 3-4. But those alleged memory lapses have no bearing on the issue at bar—
`
`i.e., when the inventors conceived and reduced the inventions to practice. Nor
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`does Petitioner contend or explain their relevance. For example, the exact number
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`of pulsed-DC power supplies that had been damaged (Reply 3 n.3) is irrelevant to
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`whether the inventors tested the claimed reactor configuration by July 18, 2001 or
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`whether they used a narrow-band rejection filter (“NBRF”) with the claimed
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`reactor configuration by then. On the issues of relevance, Dr. Pethe’s testimony is
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`unequivocal: “it was Dr. Zhang and Dr. Demaray who actually conceived the use
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`of this narrow-band filter, rejection filter” and they conceived it in the “early part
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`of the year.” EX1107, 123:18-125:24; see also EX1105, 89:21-90:9, 96:11-
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`137:12, 145:7-146:20, 147:21-148:8, 153:22-154:9, 158:11-159:8, 164:8-167:18.
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`3.
`Alleged Deficiencies In Declaration Preparation
`Petitioner complains that Drs. Zhang and Pethe spent too little time on their
`
`declarations and that Demaray’s counsel had input to the declarations, resulting in
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`similarities among four paragraphs of the declarations. Reply 4-6. Not only is
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`“inquiry concerning the mechanics of declaration preparation … ‘a waste of time,
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`both for the witness and the Board,”‘ (Square, Inc. v. Think Computer Corp.,
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`CBM2014-00159, Paper No. 47 at pp. 26-27, 2015 WL 7695141, at *13 (PTAB
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`Nov. 27, 2015)), the criticism is also factually inaccurate.
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`Both Drs. Zhang and Pethe confirmed that their statements are true and
`
`correct and their own. EX1107, 81:8-13; EX1105, 19:17-20, 113:20-24. Where
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`their personal knowledge differed, the statements accurately reflect those
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`differences. E.g., EX1107, 207:23-208:10; see also EX1107, 143:19-144:9 (Dr.
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`Pethe confirming that he “provided [his] own declaration, [his] own recollections”
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`and that if there were discrepancies with others’ recollections, he “would stick to
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`[his] recollections”). And any input from counsel was after discussion with the
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`witness to verify the facts. EX1107, 84:1-94:2, 133, 174:15-177:13. The
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`testimony confirms the independence and credibility of the witnesses.
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`4. Who Conceived NBRFs (Reply 6-7)
`Inventorship is not in dispute here. Nor would the answer to the question
`
`which of the named inventors conceived NBRFs undermine Drs. Zhang and
`
`Pethe’s testimony that the claimed reactor configuration with NBRF was
`
`successfully used for its intended purposes (e.g., depositing an insulating thin
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`films) by July 18, 2001.
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`5.
`Alleged Lack Of Personal Knowledge
`Petitioner suggests that because Dr. Pethe relied on the notebooks—instead
`
`of his memory—for certain dates, his testimony should be discounted. Reply 8.
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`But as Petitioner acknowledges, the invention took place “[o]ver 20 years ago.”
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`Reply 3. Thus, unsurprisingly, Dr. Pethe (and Dr. Zhang) needed to consult the
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`notebooks for the “exact dates” and the “exact conditions.” EX1107, 79:14-19,
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`82:20-83:11. This is why engineers keep notebooks: so years later, the “exact
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`details” can be verified based on the written record rather than just faded memory.3
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`Dr. Pethe also confirmed that the notebook entries were consistent with his
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`recollection of “the overall flow.” EX1107, 79:14-19, 80:22-81:19.
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`6.
`Notebooks
`Dr. Pethe confirmed that in the relevant time period, he, Dr. Zhang and
`
`another inventor regularly reviewed one another’s notebooks “[a] few times a
`
`week” and the notebook entries he referenced in his declaration “look like the
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`notebooks that [they] had in Symmorphix” (original assignee of the patents). Id.,
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`261:13-262:14; see also id., 262:25-264:3, 267:8-268:18. Dr. Pethe—who is not a
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`co-inventor—also reviewed and witnessed the test data for the June 13, 2001 runs
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`in Dr. Narasimhan’s notebooks. EX2020, ¶25; EX2013, 18-21.
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`Drs. Zhang and Pethe also authenticated the notebooks. EX1105, 246:23-
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`248:5, 266:15-267:21; EX1107, 260:22-262:14; 225:6-13. Neither witness has any
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`financial interest in the outcome of these proceedings. EX1105, 244:5-21;
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`EX1107, 198:7-199:7. Both attested, unrebutted, that during the relevant period,
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`Symmorphix required its engineers to maintain notebooks and to record
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`3 Curiously, Petitioner chose not to even show Dr. Pethe the notebooks at his
`deposition. EX1107, 260:18-23.
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`contemporaneously pertinent daily activities and experiments. EX2019, ¶7;
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`EX2020, ¶14; EX1105, 246:23-247:10.
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`Petitioner faults the witnesses for not having access to physical copies of the
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`notebooks or knowing if they had been altered or how they had been stored. Reply
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`9. Dr. Zhang, however, confirmed that the only changes were post-it notes added
`
`by Dr. Demaray during application preparation. POR, 22 n.5, 26; EX1105,
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`247:11-17, 247:20-248:5 (other notebooks). And Dr. Pethe confirmed that the
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`notebook pages he referenced “look like the notebooks that [they] had in
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`Symmorphix” (original assignee of the patents). EX1107, 261:13-262:14.
`
`7.
`Claim Charts
`The claim charts compile the corroborating evidence to aid the Board in
`
`determining whether the inventors used the claimed combination of reactor design
`
`and NBRF before July 18, 2001. The focus is whether under the rule of reason the
`
`inventor’s account is sufficiently corroborated by such supporting evidence as a
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`whole, and not whether each item independently proves the inventor’s account or a
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`claim element. See discussion supra at 2-3.
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`8.
`Test Runs And Filter Schematics
`Petitioner fails to consider the evidence for individual runs fails as whole.
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`Instead Petitioner looked at each piece of evidence independently. This is contrary
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`to the established law on corroborating evidence for inventions. Fleming, 774 F.3d
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`at 1377.
`
`(a)
`June 13, 2001 Run
`Petitioner alleges that Patent Owner has not shown that the June 13, 2001
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`run used an NBRF operating at the frequency of RF bias power or a pulsed DC that
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`provided “alternating negative and positive voltages to the target.” Reply 12. As
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`explained above, it is Petitioner’s burden to prove otherwise once Patent Owner
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`came forward with evidence of prior invention. No contrary evidence is presented.
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`Petitioner focused on selected paragraphs of Dr. Pethe’s testimony. But that
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`testimony must be read in context. Dr. Pethe explained the problems encountered
`
`in spring 2001 when Symmorphix used both RF bias to a substrate and a pulsed
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`DC power source to target. EX2020, ¶¶19-21. He then explained that the
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`inventors determined the cause of the problem and described the solution that the
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`inventors invented. Id., ¶22. It is in this context that he discussed the June 13,
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`2001 run. Id., ¶¶23-25. For example, Dr. Pethe explained that the successful
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`“biased RPDC” run on a “60/40 [Si/Al] target” referenced in Dr. Zhang’s notebook
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`refers to a “biased reactive pulsed DC process.” Id., ¶24. Given the problem the
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`inventors were trying to solve, a POSITA would have understood that this refers to
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`a process involving pulsed DC power to target and RF bias to substrate. EX2009,
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`¶80; EX1106, 241:23-242:11; EX2030, 144:12-149:17. Dr. Pethe also testified to
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`the naming conventions of the test files used by the inventors. EX2020, ¶18.4
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`Concerning the filter’s frequency, Dr. Pethe testified that the inventors
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`“conceived the use of [a] narrow band rejection filter between the DC power
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`source and the target in a biased pulse DC reactive sputtering system to protect the
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`target power source,” (EX2020, ¶22), which a POSITA would understand to mean
`
`the filter operates to reject the RF bias power at its operating frequency. EX2009,
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`¶¶71-74. The testimony is consistent with the declaration submitted by Dr.
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`Demaray during prosecution years before this litigation. EX1052, 1134.
`
`The testimony is also consistent with Dr. Zhang’s notebook pages where she
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`tried to calculate the inductor and capacitor needed for operating at 2MHz, the
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`frequency of the RF bias power applied to the substrate. EX2012-pp. 201-02,
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`EX2020, ¶21 (2MHz RF bias to substrate); EX2009, ¶¶71-74. This is also
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`consistent with the engineering diagram sent by Mr. Weisse showing an NBRF
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`centered at 2 MHz. EX2012-p.217; EX2009, ¶¶76-78; EX1108, ¶71. The designs
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`thus consistently demonstrated to a POSITA that the inventors intended the filter to
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`operate at the 2MHz RF bias frequency. EX2009, ¶¶71-78.
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`4 It is of little consequence that the counsel provided the wafer ID. Dr. Pethe
`provided uncontroverted testimony on how those wafer IDs and test file names are
`to be interpreted. EX2020, ¶18.
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`Similarly, as to the whether the DC power supply provided alternating
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`negative and positive voltages to the target, Dr. Pethe confirmed that Pinnacle
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`Plus+ “was designed such that it provided alternating negative and positive
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`voltages to a target to, for example, extinguish arcs and had the option of constant
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`pulsing.” EX2020, ¶12. There is no dispute that the runs were done with Pinnacle
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`Plus+. E.g., id., ¶22; EX1107, 147:16-22. Thus, evidence as a whole corroborates
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`Dr. Zhang’s testimony.
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`(b) Early July 2001 Run
`Petitioner again looks at each piece of evidence separately. It disputes the
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`information documented on EX2012-p.214 in Dr. Zhang’s notebook. Reply 18-19.
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`But it ignores testimony by Dr. Pethe that the code name “Arizona” referred to
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`BRPDC on cladding layers, “Florida” refers to “BRPDC core layers” and “BRPDC
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`process was used to describe [the] biased reactive pulsed DC process.” EX2020,
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`¶24; EX1107, 176:4-10.
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`Concerning “BRPDC,” that is the inventors’ shorthand which, given the
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`context of their R&D activities, a POSITA would understand to refer to a
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`deposition process involving pulsed DC power to the target and RF power to bias
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`the substrate. EX2009, ¶80; EX1106, 241:23-11 (“I think that one of skill in the
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`art who had access to the notebooks would think that upon reading them, yes.”).
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`Dr. Subramanian speculates that “BRPDC” could refer to something else but offers
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`no alternative interpretation that would comport with the context of the notebooks.
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`EX1108, ¶¶ 91-92; see also EX2030, 144:2-151:8; EX2014 (collection of
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`notebook pages and datasheets related to BRPDC during prosecution).
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`Petitioner asserts that Dr. Pethe’s testimony does not establish where pulsed
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`DC and RF were applied or whether a NBRF was used as claimed. Reply 19. That
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`assertion once again ignores the background against which the inventions took
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`place. See EX2020, ¶¶12, 19-23; discussion supra at 9-10. As to the alleged
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`discrepancy in whether the target was Al/Si or Al/SiOx, the difference is irrelevant
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`to any claim at issue.
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`Petitioner also asserts that the July 2 run might not have included “magnet”
`
`or “magnetic field.” Reply 19-20. But its own citation showed that the inventors
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`tried configurations with magnets, which is sufficient to show the conception and
`
`reduction to practice.
`
`(c) Mid-July Run
`Petitioner made essentially the same arguments for this run. Reply 20-21.
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`The same responses apply.
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`(d) Dr. Zhang’s Hand-Drawn Filter Schematics
`Improperly incorporating Dr. Subramanian’s supplemental declaration,
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`Petitioner speculates that a filter sketched by Dr. Zhang could be a band-pass filter,
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`because patent owners earlier tried band-pass filters. Reply 16. But the filters that
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`the inventors tried were low-pass filters that passed through frequencies below a
`
`threshold (EX1013, 67), not the band-pass filters noted by Dr. Subramanian (see
`
`EX1108, ¶55; EX2030, 50:17-52:24). A POSITA also would not have used a
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`band-pass filter because band-pass filters admittedly would not have protected DC
`
`power source from the RF bias power, the reason for using a filter. Reply 16-17;
`
`EX2012-pp. 201-202; EX2030, 58:15-60:20, 55:4-58:13. Petitioner’s assertion
`
`that Dr. Zhang drew a band-pass filter is therefore unfounded.
`
`Petitioner then argues that the filter could be a wide-band one. Reply 16-17.
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`Dr. Glew explains that in the context of the ’276 patent, a POSITA would
`
`understand an NBRF is a “band rejection filter narrow enough that rejects the
`
`frequency of the RF bias power without fundamentally altering the DC pulse that
`
`it’s protecting.” EX1106, 201:2-7, 201:18-202:6. Petitioner and its expert do not
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`dispute that interpretation, or argue that the intended filter would not meet Dr.
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`Glew’s definition. See Reply generally. Further, Dr. Subramanian testified that a
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`notch filter is a narrow-band filter and that Hirose’s filter that resonates at 2MHz
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`would drop by 3 db at 3MHz (which, under Dr. Subramanian’s methodology,
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`would yield a filter with a ~2MHz bandwidth). EX2016, 33:9-24, 36:8-38:6;
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`EX2017, 357:6-358:17; EX2030, 68:20-69:4 (EX1013, Fig. 2-9G depicts a
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`NBRF), 115:13-117:4; Pet. 28 (alleging that Hirose’s filters are NBRFs).
`
`Filter sketched by inventors
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`Alleged NBRFs
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`
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`
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`EX1013, Fig. 2-9G
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`EX1108, 67
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`EX1006, Fig. 6
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`Tellingly, while Petitioner criticizes Dr. Glew for the parameters he used in
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`his simulation, Petitioner’s expert did not attempt to show how change in the
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`parameters would affect the bandwidths of the filters. Reply 17-18. In contrast,
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`Dr. Glew did multiple simulations using different inputs (including values far from
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`what he deemed typical) to show that, despite these variations, the resulting filters
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`remain V-shaped notch filters. EX2009, ¶75, Appendix B.5
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`(e)
`7/18/2001 Filter Schematics
`Petitioner first irrelevantly disputes whether the filter schematics from Mr.
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`Weisse should be considered part of Dr. Zhang’s notebook. Reply 21. But of
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`relevance, the schematic has a July 18, 2001 date on its face, and Petitioner does
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`not dispute that date. See EX2012-pp. 214-215 (Lot 66 run planning, including “2
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`more RF filter” & “ask Bob, an RF filter”), 217 (schematics).
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`Petitioner next complains that no documents expressly stated the frequency
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`and bandwidth of the filter. Reply 22. But Dr. Glew provided simulation showing
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`that the filter operated at 2 MHz, a conclusion that Dr. Subramanian does not
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`dispute. EX1108, ¶¶72-85.
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`Dr. Subramanian also does not dispute that the simulated filter shows a
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`notch shape. Id.6 Indeed, even Dr. Subramanian’s zoomed-in figure shows a notch
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`5 Dr. Glew also testified that certain circuit configurations are associated
`with narrowband filters. EX1106, 226:6-227:12.
`6 Dr. Glew’s reference to a 50-ohm resistance as “typical for a plasma
`sputtering system” is based on his 30+ years of experience; and the simulation
`based on the conservative 1000-ohm resistance showed an even sharper response.
`EX2009, ¶¶75, 78.
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`shape having a “pointy and V-shaped curve,” just like the Hirose one that
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`Petitioner characterized as an NBRF and, according to Dr. Subramanian’s previous
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`testimony, would have a bandwidth of ~ 2MHz for a center frequency of 2MHz.
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`See below; Pet. 28; see also EX2016, 33:9-24, 36:8-38:6; EX2017, 357:6-358:17
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`(notch filter is a narrow-band filter), EX2030, 68:20-69:4, 115:13-117:4.
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`Filter used by inventors
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`Alleged NBRFs
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`EX1108,73
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`EX1006, Fig. 6
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`EX1013, Fig. 2-9G
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`Petitioner then argues that the schematic does not show that the filter was
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`placed between the DC power supply and the target. Reply 22. But unrebutted
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`testimony by Drs. Zhang and Pethe establishes that the prototype filter “was
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`installed between the DC power supply and a target.” EX2020, ¶23; EX2019,
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`¶¶19-24.
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`Petitioner then argues that the schematic did not show that the pulsed DC
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`had alternating negative/positive voltages or that RF bias was applied to the
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`substrate. Again, it ignores Dr. Pethe’s relevant testimony. EX2020, ¶¶12
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`(Pinnacle Plus+, the only pulsed DC supply used at the time, “provided alternating
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`negative and positive voltages to a target”), 19-23 (the runs were for solving
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`damages to Pinnacle Plus+ caused by RF bias to substrate).
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`Lastly, Petitioner suggests that there was no reduction to practice by July 18,
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`2001 because the inventors allegedly “were still tuning the elements to make sure it
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`worked.” Reply 23. Dr. Zhang testified, however,
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`He [Weisee] gave us the final circuit drawing in July, I believe. On
`July 18th. [¶]. But the -- the filter has [sic] been built way before
`that. The reason we didn’t have a final drawing, were still tuning the
`elements to make sure it worked, choose the right value.
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`EX1105, 152:21-153:3. That is, the inventors had used the filter built before July
`
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