`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`APPLIED MATERIALS, INC.
`Petitioner,
`
`v.
`
`DEMARAY LLC
`Patent Owner.
`
`
`___________________
`
`Case IPR2021-00103
`Patent No. 7,544,276
`___________________
`
`
`
`PATENT OWNER’S RESPONSE
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
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`10982423
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`Case IPR2021-00103
`Patent No. 7,544,276
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`TABLE OF CONTENTS
`
`Page
`
`
`I.
`Introduction ................................................................................................... 1
`The Unique Insights Of The ’276 Inventions ............................................... 3
`II.
`III. Claim Construction ....................................................................................... 9
`IV. Hirose Is Not Prior Art ............................................................................... 11
`A.
`Legal Standards ................................................................................ 12
`B.
`Evidence Of Conception And Reduction To Practice ..................... 15
`1.
`The Conception, Design, And Construction Of The
`Claimed Reactor System ........................................................ 15
`Testing Confirms The Claimed Reactor System ................... 29
`2.
`The Evidence Maps To The Challenged Claims ................... 32
`3.
`The Petition Fails To Demonstrate That Any Challenged Claim Is
`Invalid Based On Barber And Hirose ......................................................... 41
`A.
`Prior Art Neither Teaches, Nor Suggests, The Claimed
`Narrow Band-Rejection Filter .......................................................... 43
`1.
`The combination does not disclose a filter between
`“coupled between the pulsed DC power supply and the
`target area” ............................................................................. 44
`The combination does not disclose a filter that rejects
`or operates “at a frequency of the RF bias power
`supply” ................................................................................... 46
`A POSITA Would Not Have Included The Claimed Filter In
`Barber’s System ............................................................................... 49
`
`V.
`
`2.
`
`B.
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`Prior art never suggested using a narrowband-rejection
`filter in series with a bipolar pulsed DC power supply
`to reject RF power .................................................................. 51
`There is no competent evidence of risk of damage to
`Barber’s power source 230 due to RF coupling .................... 63
`The lack of teaching and suggestion of the need for a
`claimed filter in the claimed reactor system shows
`objective evidence of non-obviousness ................................. 70
`Same Deficiencies In Analysis Of Other Claims ............................. 72
`C.
`VI. CONCLUSION ........................................................................................... 72
`
`
`1.
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`2.
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`3.
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`Case IPR2021-00103
`Patent No. 7,544,276
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Apator Miitors ApS v. Kamstrup A/S,
`887 F.3d 1293 (Fed. Cir. 2018) .......................................................................... 30
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) ...................................................................... 1, 49
`Cisco Sys., Inc. v. C-Cation Techs., LLC,
`IPR2014-00454, Paper 12 (PTAB Aug. 29, 2014) ............................................... 8
`Cooper v. Goldfarb,
`154 F.3d 1321 (Fed. Cir. 1998) .................................................................... 13, 30
`E.I. du Pont De Nemours & Co. v. Unifrax I LLC,
`921 F.3d 1060 (Fed. Cir. 2019) .......................................................................... 14
`Fleming v. Escort Inc.,
`774 F.3d 1371 (Fed. Cir. 2014) .......................................................................... 14
`In re Giacomini,
`612 F.3d 1380 (Fed. Cir. 2010) .......................................................................... 12
`Harris Corp. v. IXYS Corp.,
`114 F.3d 1149 (Fed. Cir. 1997) .......................................................................... 11
`In re Hilmer,
`359 F.2d 859 (CCPA 1966) ................................................................................ 12
`Hybritech Inc. v. Monoclonal Antibodies, Inc.,
`802 F.2d 1367 (Fed. Cir. 1986) .......................................................................... 29
`Hyosung TNS Inc. v. Int’l Trade Commission,
`926 F.3d 1353 (Fed. Cir. 2019) .......................................................................... 44
`Linear Tech. Corp. v. Impala Linear Corp.,
`379 F.3d 1311 (Fed. Cir. 2004) .......................................................................... 14
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`Case IPR2021-00103
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`Microsoft Corp. v. Enfish, LLC,
`662 Fed. App’x 981 (Fed. Cir. 2016) ................................................................. 62
`Mintz v. Dietz & Watson, Inc.,
`679 F.3d 1372 (Fed. Cir. 2012) .......................................................................... 72
`NFC Tech., LLC v. Matal,
`871 F.3d 1367 (Fed. Cir. 2017) .......................................................................... 28
`Otsuka Pharmaceutical Co., Ltd. v. Sandoz, Inc.,
`678 F. 3d 1280 (Fed. Cir. 2012) ....................................................................... 2, 8
`Perfect Surgical Techniques, Inc. v. Olympus Am., Inc.,
`841 F.3d 1004 (Fed. Cir. 2016) .......................................................................... 13
`South-Tek Sys., LLC v. Eng’g Corrosion Sols., LLC,
`748 F. App’x. 1003 (Fed. Cir. 2018) .................................................................. 69
`Spansion, Inc. v. ITC,
`629 F.3d 1331 (Fed. Cir. 2010) .......................................................................... 12
`Star Sci., Inc. v. R.J. Reynolds Tobacco Co.,
`655 F.3d 1364 (Fed. Cir. 2011) .......................................................................... 43
`Taurus IP, LLC v. DaimlerChrysler Corp.,
`726 F.3d 1306 (Fed. Cir. 2013) .......................................................................... 13
`Tomecek v. Stimpson,
`513 F.2d 614 (C.C.P.A. 1975) ............................................................................ 12
`In re Van Os,
`844 F.3d 1359 (Fed. Cir. 2017) .......................................................................... 70
`Statutes
`35 U.S.C. § 102(e) ............................................................................................. 11, 12
`Other Authorities
`37 C.F.R. § 42.6(a)(3) ................................................................................................ 8
`IPR2021-00104, Paper 13, 38 .............................................................................. 9, 10
`MPEP § 2136 ........................................................................................................... 12
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`Case IPR2021-00103
`Patent No. 7,544,276
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`
`EXHIBIT LIST
`
`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
`
`EX2008
`
`EX2009
`
`EX2010
`
`EX2011
`
`EX2012
`
`EX2013
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`RESERVED
`
`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
`
`MDX Sparc-Le 20 User Manual
`
`Laboratory Notebook of Dr. HongMei Zhang
`
`Laboratory Notebook of Mr. Mukundan Narasimhan
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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
`
`EX2020
`
`EX2021
`
`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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`EX2028
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`Case IPR2021-00103
`Patent No. 7,544,276
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`IPR2021-00105 Petition for Inter Partes Review of U.S. Patent No.
`7,544,276
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`Introduction1
`Petitioner has, for multiple independent reasons, failed to show by a
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`Case IPR2021-00103
`Patent No. 7,544,276
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`I.
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`preponderance of evidence that the challenged claims are unpatentable. First,
`
`every asserted ground relies on Hirose, but Hirose does not qualify as prior art. As
`
`explained in Section IV, the inventors conceived and reduced to practice the ’276
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`patent’s inventions on or before July 18, 2001, Hirose’s reference date.
`
`Second, even if Hirose qualified as prior art, the combination of Barber and
`
`Hirose would not render the challenged claims obvious. The state of the art at the
`
`time of the inventions, for example, did not disclose or suggest the use of a narrow
`
`band-rejection filter as claimed, in a reactor system that included both bipolar
`
`pulsed DC power to a target and a RF power supplying bias to the substrate. E.g.,
`
`See EXS1005, -1011, -1019, -1036, -1047, -1048, -1059 (no filter disclosed);
`
`EX1014 (low-pass filter used to decouple pulsed DC power to a substrate from RF
`
`power used to generate a plasma). Given the materiality of the claimed filter
`
`element in the claimed reactor system (see EX1004, 434), Petitioner had to show
`
`that the missing element was present in the prior art, but could not. Arendi
`
`S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1364-66 (Fed. Cir. 2016).
`
`
`1 All emphasis are added unless otherwise noted.
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`Third, Petitioner failed to show any specific reason for including the claimed
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`filter in Barber’s system. As explained in Section V.B.2 below, Barber’s reactor
`
`design, which traps plasma and ionic species to the electrodes near the top of the
`
`reactor and away from the substrate holder, minimizes the risk of electrical
`
`coupling between Barber’s power sources 230 and 235. The risk of coupling and
`
`damage to DC power supply is further reduced by maintaining the target as
`
`conductive to reduce the arcing events and by keeping the plasma density low.
`
`This differs from Hirose, where the plasma and ion particles are between two
`
`electrodes, thereby increasing the possibility of electrical coupling between the two
`
`power sources connected to the two electrodes through ion conduction. Given
`
`these critical differences, unsurprisingly, Petitioner has not demonstrated what
`
`improvement to Barber’s designs or processes, if any, a claimed filter could have
`
`added over Barber’s existing methods.
`
`Fourth, Petitioner’s only rationale for using a claimed narrow band-rejection
`
`filter over a low pass filter in their prior art combinations—not “distort[ing] the
`
`shape of the pulsed DC waveform”—came from the inventors. Compare EX2016
`
`at 90:20-91:22, 191:14-193:4, 279:12-22, with EX1052 at 1134, 1456-57. That is
`
`hindsight because “the inventor’s own path itself never leads to a conclusion of
`
`obviousness; that is hindsight.” Otsuka Pharmaceutical Co., Ltd. v. Sandoz, Inc.,
`
`678 F. 3d 1280, 1296 (Fed. Cir. 2012).
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`For these and additional reasons described below, Petitioner has not met its
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`Case IPR2021-00103
`Patent No. 7,544,276
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`burden to show that the challenged claims are unpatentable.
`
`II. The Unique Insights Of The ’276 Inventions
`U.S. Patent No. 7,544,276 is entitled “Biased Pulse DC Reactive Sputtering
`
`of Oxide Films.” EX1001, cover. While the title mentions “oxide films,” the
`
`specification discloses the inventions can be used with other films and the claims
`
`are not limited to oxides. See id., 16:19-24, 7:47-52, 9:4-10. The patent provides
`
`solutions to certain problems associated with target poisoning that occurs when
`
`sputtering material from a target to a substrate in a thin film reactor chamber. The
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`patent’s claims require several interrelated components in a reactor system having
`
`a chamber for PVD processes. In addition to “a target area for receiving a target”
`
`and “a substrate area opposite the target area for receiving the target,” they also
`
`require at least:
`
`• “a pulsed DC supply coupled to the target area, the pulsed DC power
`
`supply providing alternating negative and positive voltages to the target”;
`
`• “an RF bias power supply coupled to the substrate” and
`
`• “a narrow band-rejection filter that rejects [operating] at a frequency of
`
`the RF bias power supply coupled between the pulsed DC power supply
`
`and the target area [target].”
`
`Id., 22:44-50 (cl. 1), 22:66-23:5 (cl. 6).
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`In the patented inventions, the target “provides material to be deposited on
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`[the] substrate.” See id., 5:20-24. In some preferred embodiments, the target “also
`
`functions as a cathode when power is applied to it.” Id., 5:24-26. A basic system
`
`is illustrated in Fig. 1A:
`
`
`
`
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`Bipolar pulsed DC power to the target (i.e., having a polarity that oscillates
`
`between negative and positive voltages) is used to help prevent arcing associated
`
`with sputtering films, such as oxides, nitrides and oxynitrides. Id., 5:31-35. This
`
`is because, e.g., in the presence of reactive gases such as oxygen and/or nitrogen,
`
`films of oxides, nitrides or oxynitrides can build up on the surface of the target.
`
`See, id., 11:49-58, 4:49-51. Under steady state DC voltage conditions (e.g., steady
`
`negative voltage conditions), “[t]he insulating surface charges up and result[s] in
`
`arcing during process[es]. This arcing can damage the power supply, produce
`
`particles and degrade the properties of the deposited film.” EX1001, 4:49-52; see
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`also 11:59-64. By reversing the polarity of the DC voltage on the target to positive
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`as needed, “the insulating layer on the surface of target ... is discharged” during the
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`positive period (that is, the surface is neutralized during the period), “and arcing is
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`prevented.” Id., 5:33-35, 11:64-12:2.
`
`RF bias power is supplied to the substrate to, for example, “dandif[y] (sic)
`
`[densify]” the deposited film and to “substantially eliminate[]” columnar structures
`
`that may negatively affect film quality. Id., 5:60-67. The RF bias power, however,
`
`risks damaging the pulsed DC power supply by coupling to it through the plasma
`
`created within the chamber body. Id., 5:50-51. Indeed, during development of the
`
`deposition chambers described, the inventors, including several PhDs with decades
`
`of experience in the field, destroyed multiple pulsed DC power supplies when
`
`energy from the RF bias power source was not attenuated. See EX1052, 1134, ¶ 3.
`
`To address this issue, the inventors first considered a band-pass filter or low-pass
`
`filter between the pulsed DC power supply and the plasma, but determined that
`
`such filters would either fail to protect the pulsed DC power supply from the RF
`
`bias power signal or prevent critical arc suppression technology from functioning
`
`properly. Id. The inventors eventually discovered that a narrow band-rejection
`
`filter, as described in the specification and claims, could overcome the problem of
`
`catastrophic failure of the pulsed DC power supply, including its output
`
`electrometer circuit, during operation. Id. As the specification describes, the
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`inventors overcame these problems by placing a narrow band-rejection filter
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`between the pulsed DC power supply and the target that “prevents the bias power
`
`from power supply 18 from coupling into pulsed DC powers supply 14.” EX1001,
`
`5:50-51.
`
`The use of the claimed narrow band-rejection filter that operates/rejects at a
`
`frequency of the RF bias power on the substrate is a unique insight of the inventors
`
`specific to a reactor system that combines bipolar pulsed DC power to a target
`
`(e.g., to help suppress arcing) with an RF bias on a substrate. In their testing, the
`
`inventors discovered that a filter that rejects a signal within “a narrow band
`
`centered on the RF frequency of the RF bias, protected the pulsed DC power
`
`supply from the RF energy …..” EX1052, 1134. They also explained to the
`
`examiner certain advantages of such a filter and why it was not a mere design
`
`choice:
`
`A filter that blocks too many of the constituent frequencies of the
`pulsed DC waveform results in the target voltage not attaining a
`positive voltage. A filter that does not block the RF bias voltage can
`result in failure of the DC power supply.
`
`Id., 1456-57. The examiner accepted that “the claimed reactor combined with the
`
`narrow band rejection filter that rejects [operating] at a frequency of the RF bias
`
`power supply coupled between the pulsed DC power supply and the target area” is
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`novel and non-obvious over prior art. EX1004, 434. This conclusion applies to
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`Patent No. 7,544,276
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`the challenges raised here.
`
`None of Petitioner’s references teaches the use of a narrow band-rejection
`
`filter in a reactor system as described in the ’276 patent. For example, none of
`
`Barber, Belkind, Sproul, Hong and Kelly, which all allegedly applied bipolar
`
`pulsed DC power to a target and an RF bias to a substrate, suggested a need for a
`
`filter between the DC power supply and the target. See EXS1005, -1008, -1011, -
`
`1019, -1036, -1047, -1048, -1059; EX2016, 77:15-79:2, 79:10-80:25, 81:21-86:7,
`
`127:21-130:5; EX2017, 520:14-522:14, 583:8-9; 585:15-585:25, 588:2-11. Even
`
`when a reference discloses a filter placed in series with a pulsed DC power supply
`
`to reject RF power used a low pass filter—as opposed to the claimed narrow band-
`
`rejection filter. See EX1014, 3 & Fig. 1 (a “low-pass unit” placed between the
`
`pulsed DC bias power to substrate and substrate to block interference from 2 MHz-
`
`ICP power source); EX2016, 90:14-19.
`
`As another example, Petitioner asserts that the configuration in Figure 1A of
`
`the ’276 patent was “nothing new” and was taught in manuals by the “same
`
`manufacturer of the DC power supply exemplified in the ’276 patent.” Pet., 10.
`
`There is no evidence, however, that the “RF filter” or “ac blocking filter”
`
`referenced in these documents is a narrow band rejection filter. See id., 10, 33-
`
`36; Glew (EX2009), ¶¶ 20, 165 (explaining that the referenced “ac blocking filter”
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`would be understood as a low-pass filter used to block high RF frequencies);
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`EX2016 , 116:17-23 (Petitioner’s expert acknowledging “the manuals themselves
`
`don’t explicitly say what type of RF filter to use”).2 Indeed, even declarants that
`
`Petitioner located after the institution could not say what types of filters were used
`
`at the time of the invention for reactors with DC power sources. EX2018 (Stowell)
`
`at 60:18-25 (personally implemented “[l]ow pass”), 114:3-10 (could not recall
`
`what types of RF filters used), 116:11-117:15 (could not recall what type of filter
`
`in response to manuals).
`
`This is unsurprising because the only advantage Petitioner and its expert
`
`assert for using a narrow band-rejection filter over a low-pass filter in their
`
`proposed combinations is that a low-pass filter would “degrade” the square shape
`
`of a DC pulse, an insight from the ’276 patent applying to certain embodiments
`
`and coming solely from the inventors and not any prior art references. EX2016,
`
`90:20-91:15, 112:11-113:6, 159:22-160:8, 163:22-164:7, 164:21-25 (“It is true …
`
`that I did not cite a single reference which explicitly stated that a narrowband
`
`rejection filter would preserve the shape of a square wave.”). But, “the inventor’s
`
`
`2 Petitioner cites to its expert’s declaration (EX1002) “generally.” Pet. 11.
`The Board should decline to consider such impermissible wholesale incorporation
`of the expert testimony. 37 C.F.R. § 42.6(a)(3); Cisco Sys., Inc. v. C-Cation
`Techs., LLC, IPR2014-00454, Paper 12 at 10 (PTAB Aug. 29, 2014) (informative).
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`own path itself never leads to a conclusion of obviousness; that is hindsight.”
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`Otsuka, 678 F. 3d at 1296.
`
`III. Claim Construction
`The ’276 patent claims require:
`
`• “a narrow band-rejection filter that rejects at a frequency of the RF
`
`bias power supply,” or
`
`• “a narrow band rejection filter operating at a frequency of the RF bias
`
`power supply.”
`
`EX1001, cls. 1 & 6. In its Institution Decision for the related ’657 patent, the
`
`Board invited the parties to address the construction of a similar term. See
`
`IPR2021-00104, Paper 13, 38. As the district court in parallel litigation already
`
`determined, the above terms should be construed according to their plain and
`
`ordinary meaning, which the parties to the litigation agree requires the claimed
`
`filter to have a rejection band set at a frequency of the RF bias power supply. See
`
`EX2021; EX2022 at 7-10.
`
`Specifically, the claims require more than a “band-rejection filter” with “a
`
`very narrow frequency response” (Pet., 28)—they require the narrow band filter to
`
`“reject[]” or “operat[e]” “at a frequency of the RF bias power supply.” EX1001,
`
`cls. 1 & 6. Indeed, in the parallel district court litigation, the real-parties-in-interest
`
`admit that these limitations require a filter having a rejection band set at the RF
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`bias frequency. See, e.g., EX2022 at 10 (arguing filter “centered on the RF bias
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`frequency”).3
`
`The parties’ understanding comports with the specification, which discloses
`
`a “[f]ilter 15 [that] prevents the bias power supply from power supply 18 from
`
`coupling into pulsed DC power supply 14.” EX1001, 5:49–50. The specification
`
`further states that “[i]n some embodiments, power supply 18 is a 2 MHz RF power
`
`supply ... [t]herefore, filter 15 is a 2 MHz band-rejection filter.” Id., 5:51–55. Such
`
`a filter, with, for example, a bandwidth of about 100 kHz, “prevents the 2 MHz
`
`power from the bias to substrate 16 from damage power supply 18.” Id., 5:55-59.
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`During prosecution of the ’276 patent’s parent application, the Applicants
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`similarly emphasized the importance of preventing the frequency of the RF bias
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`power from reaching the DC power supply. EX1052, 1130-31 (the filter blocks
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`“the frequency of the bias power itself ... [O]ther filter designs resulted … in
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`leakage of RF power back to the pulsed DC power supply – resulting in the
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`catastrophic failure of the power supply.”). It is therefore undisputed that the filter
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`3 In the district court, Patent Owner disagrees with defendants’ alternative
`construction because (1) the term “narrowband rejection filter” alone does not
`impose a requirement on the filter’s operating frequency; and (2) the construction
`that the filter has to be “centered” on any “one” RF bias frequency introduces
`ambiguity and is inconsistent with the intrinsic evidence.
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`at issue in the ’276 patent needs to have a rejection band set at the frequency of the
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`bias power to protect the pulsed DC power supply.
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`The claim language and the patent specification therefore support an
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`interpretation of the term in which the claimed filter must have a rejection band set
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`to reject at a RF bias frequency applied to the substrate. To the extent any
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`ambiguity remains, “claims should be read in a way that avoids ensnaring prior art
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`if it is possible to do so.” Harris Corp. v. IXYS Corp., 114 F.3d 1149, 1153 (Fed.
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`Cir. 1997). That is, a POSITA would not understand the claim term “narrow band-
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`rejection filter that rejects/operating at a frequency of the RF bias power supply” to
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`encompass a filter whose pertinent operating frequency is materially offset from
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`the RF bias frequency by design, such as Hirose’s filter 20 in Figure 1.
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`IV. Hirose Is Not Prior Art
`All grounds of the Petition rely on Hirose, whose reference date—July 18,
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`2001—is after, or at best on, the ’276 patent’s date of conception and actual
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`reduction to practice. Consequently, every ground in the Petition fails. In
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`particular, Petitioner does not assert that Hirose is entitled to a reference date
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`earlier than its July 18, 2001 filing date. See Pet., 5 (asserting that Hirose “issued
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`from an application filed July 18, 2001,” and “qualif[ies] as prior art under §
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`102(e)”). Nor can Petitioner, because pre-AIA § 102(e) that governs the instant
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`proceeding “does not provide for use of a U.S. patent as [a § 102(e)] reference as
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`of its foreign filing date.” In re Giacomini, 612 F.3d 1380, 1384 (Fed. Cir. 2010)
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`Case IPR2021-00103
`Patent No. 7,544,276
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`(quoting In re Hilmer, 359 F.2d 859, 862 (CCPA 1966)); MPEP § 2136 (“No
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`benefit of the filing date of the foreign application is given under pre-AIA 35
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`U.S.C. 102(e) for prior art purposes.”).
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`The record evidence demonstrates that the ’276 inventors conceived and
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`reduced to practice the ’276 inventions on or before July 18, 2001 (and likely as
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`early as June 13, 2001), on or before Hirose’s earliest reference date. Indeed, by
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`July 18, 2001, Patent Owners had a final schematic showing a narrow band-
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`rejection filter that had been repeatedly tested and shown to work. As such,
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`Petitioner’s challenges fail.
`
`A. Legal Standards
`A reference is not available as prior art against a patent under § 102(e) if its
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`reference date does not predate the invention. 35 U.S.C. § 102(e) (Pre-AIA) (prior
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`art if filed “before the invention by the applicant for patent”); Spansion, Inc. v.
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`ITC, 629 F.3d 1331, 1356 (Fed. Cir. 2010) (prior art under Ҥ 102(e) only if the
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`reference patent's effective filing date is before the date of the invention.”). To
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`remove a reference as prior art, Patent Owner can either show (1) conception and
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`reduction to practice “on or before” the reference date of the prior art or (2)
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`conception before the reference date combined with diligence and reduction to
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`practice after that date. Tomecek v. Stimpson, 513 F.2d 614, 614 (C.C.P.A. 1975)
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`(“showing an actual reduction to practice on or before the alleged date”); see also
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`Case IPR2021-00103
`Patent No. 7,544,276
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`Taurus IP, LLC v. DaimlerChrysler Corp., 726 F.3d 1306, 1323 (Fed. Cir. 2013).
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`Because the inventors conceived and reduced to practice the ’276 inventions on or
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`before Hirose’s July 18, 2001 reference date, Patent Owner need not show
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`diligence. Id.4
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`“Conception is the formation, in the mind of the inventor, of a definite and
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`permanent idea of the complete and operative invention, as it is thereafter to be
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`applied in practice.” Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998).
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`An inventor establishes an actual reduction to practice by proving: “(1) he
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`constructed an embodiment or performed a process that met all the limitations of
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`the [claim]; and (2) he determined that the invention would work for its intended
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`purpose.” Id. As evidence of the reduction to practice, a patentee can provide
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`inventor testimony corroborated with independent evidence. Id., 1330.
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`“Corroborating evidence may take many forms. Reliable evidence of
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`corroboration preferably comes in the form of records made contemporaneously
`
`with the inventive process ... Circumstantial evidence of an independent nature
`
`
`4 The totality of the evidence as described is also sufficient to establish
`reasonable diligence, particularly in light of the compressed timeframe between
`conception and reduction to practice. Perfect Surgical Techniques, Inc. v. Olympus
`Am., Inc., 841 F.3d 1004, 1009 (Fed. Cir. 2016) (“the point of the diligence
`analysis is … to assure that, in light of the evidence as a whole, the invention was
`not abandoned or unreasonably delayed.”).
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`may also corroborate. Additionally, oral testimony from someone other than the
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`Case IPR2021-00103
`Patent No. 7,544,276
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`alleged inventor may corroborate.” Linear Tech. Corp. v. Impala Linear Corp.,
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`379 F.3d 1311, 1327 (Fed. Cir. 2004) (citations omitted). The corroborating
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`evidence need not itself “constitute[] definitive proof of [inventor]’s account or
`
`discloses each claim limitation as written … It is a flexible, rule-of-reason demand
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`for independent evidence that, as a whole, makes credible the testimony of the
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`purported prior inventor with regard to conception and reduction to practice of the
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`invention as claimed.” Fleming v. Escort Inc., 774 F.3d 1371, 1377 (Fed. Cir.
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`2014); E.I. du Pont De Nemours & Co. v. Unifrax I LLC, 921 F.3d 1060, 1076-78
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`(Fed. Cir. 2019) (“our 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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`Here, Patent Owner provides testimony from the first named inventor Dr.
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`Zhang (EX2019), testimony from non-inventor Dr. Rajiv Pethe (a process engineer
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`who operated the reactors at issue, EX2020), and documentary evidence (including
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`the patent application and file history, contemporaneous records of lab notebooks,
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`filter schematics and test results) showing conception and reduction to practice.
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`This evidence establishes by a preponderance of the evidence that the ’276 patent
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`claims were reduced to practice before Hirose’s July 18, 2001 reference date and
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`that Hirose is not prior art.
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`Case IPR2021-00103
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`B.
`Evidence Of Conception And Reduction To Practice
`Evidence detailed below shows the inventors began developing the claimed
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`biased pulsed DC reactive sputtering systems and methods in spring of 2001 and
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`reduced the claimed inventions to practice by at least July 18, 2001. Zhang, ¶¶17-
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`32; Pethe, ¶22-27. Dr. Zhang is the first named inventor on the ’276 patent and
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`was central to the development of the claimed narrow band-rejection filter. Zhang,
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`¶18. Dr. Pethe was a process engineer working with Dr. Zhang at the time of the
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`inventions, and was familiar with the associated equipment, deposition runs and
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`film characterizations. Pethe, ¶3.
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`1.
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`The Conception, Design, And Construction Of The Claimed