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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`APPLIED MATERIALS, INC.
`Petitioner,
`
`v.
`
`
`
`DEMARAY LLC
`Patent Owner.
`
`
`___________________
`
`Case IPR2021-00104
`Patent No. 7,381,657
`___________________
`
`
`
`PATENT OWNER'S PRELIMINARY RESPONSE
`
`
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`10910770
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`
`TABLE OF CONTENTS
`
`Case IPR2021-00104
`Patent No. 7,381,657
`
`I.
`II.
`
`B.
`
`C.
`
`Page
`Introduction ................................................................................................... 1
`Fintiv Factors Favor Discretionary Denial Of Institution Under 35
`U.S.C. § 314(a) ............................................................................................. 4
`A.
`Fintiv Factor #1: No Evidence That The District Court
`Would Grant A Stay If A Proceeding Is Instituted ............................ 5
`Fintiv Factor #2: Jury Trial Is Expected To Occur Months
`Before The Final Written Decision .................................................... 5
`Fintiv Factor #3: There Has Been And Will Be Immense
`"Investment In The Parallel Proceeding By The Court And
`Parties" ................................................................................................ 6
`Fintiv Factor #4: There Is Substantial "Overlap Between
`Issues Raised In The Petition And In The Parallel
`Proceeding" ........................................................................................ 7
`Fintiv Factor #5: The Defendants In The Texas Litigations
`Are Real-Parties-In-Interest ............................................................... 8
`Fintiv Factor #6: "Other Circumstances That Impact The
`Board's Exercise Of Discretion, Including The Merits" Favor
`Non-Institution ................................................................................... 8
`III. Technology Background ............................................................................... 9
`A.
`The ‘657 invention describes a unique combination that
`solves a problem unique to reactive sputtering .................................. 9
`Prior art fails to teach the solution claimed by the ‘657 patent ....... 14
`1.
`Barber does not use any RF filter with its DC power
`supply ............................................................................................... 14
`2.
`Hirose’s filter operates at a frequency shifted from that
`of the RF bias power supply coupled to the substrate ...................... 19
`
`D.
`
`E.
`
`F.
`
`B.
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`Case IPR2021-00104
`Patent No. 7,381,657
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`Page
`
`B.
`
`C.
`
`IV. The Petition Fails To Show A Likelihood Of Success On At Least
`One Challenged Claim ................................................................................ 21
`A. Hirose’s filter is not a claimed filter (elements 1(c)-(d) and
`2(c)-(d)) ............................................................................................ 21
`1.
`The operating frequency of Hirose’s filter differs from
`that required by elements 1(d) and 2(d) ........................................... 22
`2.
`Hirose’s filter is not coupled to a bipolar pulsed DC
`power supply to a target as required by elements 1(c) and
`2(c) 25
`None of the other references suggests using a narrow band
`rejection filter in the Barber process ................................................ 29
`Petitioner has failed to articulate a competent reason why a
`POSITA would have included a claimed filter in Barber’s
`process .............................................................................................. 48
`1.
`Petitioner has failed to articulate a competent reason
`why Barber would need an RF filter between its DC power
`supply and the target......................................................................... 48
`2.
`Hirose does not suggest using a frequency of the RF
`bias power supply to the substrate that corresponds to a filter ........ 58
`3.
`Arguments regarding what a POSITA would have
`been able to do is legally insufficient ............................................... 58
`Petitioner’s analysis of other claims do not cure the
`deficiencies above ............................................................................ 61
`The Petition Should Be Denied Under 35 U.S.C. § 325(d) ........................ 61
`A.
`The Petition relies on the same or substantially arguments
`overcome during prosecution ........................................................... 62
`The Petition fails to show that the office erred in a manner
`material to the patentability of the challenged claims ...................... 66
`
`V.
`
`D.
`
`B.
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`TABLE OF AUTHORITIES
`
`Case IPR2021-00104
`Patent No. 7,381,657
`
` Page(s)
`
`Cases
`ActiveVideo Networks, Inc. v. Verizon Commc'ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .................................................................... 34, 59
`
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte
`GmbH,
`IPR2019-01469, Paper 6 (Feb. 13, 2020) ............................................... 61, 62, 64
`Apple Inc. v. Fintiv Inc.,
`IPR2020-00019, Paper 11 (PTAB, March 20, 2020) ..................................passim
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 15 (P.T.A.B. May 13, 2020) ........................................... 6
`Arendi S.A.R.L v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) .............................................................. 25, 27, 59
`Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`IPR2017-01586, Paper 8 (P.T.A.B. Dec. 15, 2017) ........................................... 61
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) .......................................................................... 58
`Bentley Motors Ltd. v. Jaguar Land Rover Ltd.,
`IPR2019-01539, Paper 16 (P.T.A.B. Oct. 2, 2020) .............................................. 7
`Cisco Sys., Inc. v. C-Cation Techs., LLC,
`IPR2014-00454, Paper 12 (PTAB Aug. 29, 2014) ............................................. 13
`Cont’l Intermodal Grp. – Trucking LLC v. Sand Revolution LLC,
`Case No. 7:18-cv-00147-ADA (July 22, 2020) .................................................... 5
`InTouch Techs., Inc. v. VGO Commc’ns, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) .......................................................................... 49
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 34, 37
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`Page(s)
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`Microsoft Corp. v. Enfish, LLC,
`662 F. App’x 981 (Fed. Cir. 2016) ............................................................... 29, 50
`Millennium Pharm., Inc. v. Sandoz Inc.,
`862 F.3d 1356 (Fed. Cir. 2017) .......................................................................... 48
`Monarch Knitting Mach. Corp. v. Sulzer Morat GmbH,
`139 F.3d 877 (Fed. Cir. 1998) ............................................................................ 51
`Otsuka Pharmaceutical Co., Ltd. v. Sandoz, Inc.,
`678 F.3d 1280 (Fed. Cir. 2012) .......................................................................... 55
`Polaris Industries, Inc. v. Arctic Cat, Inc.,
`882 F.3d 1056 (Fed. Cir. 2018) .......................................................................... 58
`Shire LLC v. Amneal Pharm., LLC,
`802 F.3d 1301 (Fed. Cir. 2015) .......................................................................... 48
`South-Tek Sys., LLC v. Engineered Corrosion Solutions, LLC,
`748 Fed. Appx. 1003 (Fed. Cir. 2018) ................................................................ 53
`In re Van Os,
`844 F.3d 1359 (Fed. Cir. 2017) .......................................................................... 35
`VLSI Tech. LLC v. Intel Corp.,
`Case No. 1:19-cv-00977-ADA ............................................................................. 6
`Statutes
`35 U.S.C. § 314(a) ..................................................................................................... 4
`35 U.S.C. § 325(d) ......................................................................................... 4, 61, 67
`Other Authorities
`37 C.F.R. § 42.6(a)(3) .............................................................................................. 13
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`Case IPR2021-00104
`Patent No. 7,381,657
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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.)
`
`Ex. 2001
`
`Ex. 2002
`
`Ex. 2003
`
`Ex. 2004
`
`Ex. 2005
`
`Ex. 2006
`Ex. 2007
`
`U.S. Pat. No. 6,306,265 to Fu et al.
`Prosecution History of U.S. Pat. No. 7,544,276
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`I.
`
`Introduction1
`The Office granted the challenged claims after the inventors successfully
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`Case IPR2021-00104
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`traversed that examiner’s incorrect impression that filter choice was merely “a
`
`design choice.” Ex. 1004 at 957, 978-79, 992. In particular, the inventors
`
`explained:
`
`[The claimed] narrow band rejection filter allows the combination of
`pulsed-dc power to the target (where the target voltage is oscillated
`between positive and negative voltages) and an RF bias on the
`substrate. 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.
`
`Ex. 1004 at 979. This insight of the inventors was absent from prior art of record,
`
`and absent from the references presented here. See, e.g., Sections IV.A, IV.B,
`
`IV.C.3.
`
`Specifically, Petitioner asserts that either Barber alone or a combination of
`
`Barber and Belkind2 discloses a combination of a pulsed DC power source to the
`
`target that can cause the voltage on the target to alternate between positive and
`
`
`1 All emphasis are added unless otherwise noted.
`2 Petitioner adds Belkind for grounds 9-16, relying on Belkind’s purported
`disclosure of a bipolar pulsed DC supply. Pet. 67-72. Petitioner analyzes the
`Barber/Belkind system in the same way as the Barber system and Patent Owner
`uses Barber to refer to both systems.
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`negative voltages and an RF bias power on the substrate. Pet. 15, 28, 67. Yet,
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`neither Barber nor Belkind, nor indeed any of the references describing plasma
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`deposition with a claimed reactor system, discloses the need for a filter between
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`the pulsed DC supply and the target, let alone one of the claimed properties. See
`
`Sections III.B.1 & IV.C.1(a); see also Ex. 1005 (Barber), Fig. 2 (no filter between
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`target and DC power source); Ex. 1011 (Sproul) at Fig. 1 (same); Ex. 1008
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`(Belkind) (article does not mention using a filter with the DC power supply); Exs.
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`1048 & 1059 (Kelly) (same).
`
`Hirose, the reference Petitioner asserted for the filter limitation, concerns an
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`etching system/process using only RF power supplies with RF matching circuits
`
`and associated RF filters. See Ex. 1006, Fig. 1, Abstract. The RF filter 20 coupled
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`to RF power source 14 and relied on by Petitioner is not even designed to operate
`
`or reject at the RF frequency of the RF power source 15 whose energy the filter
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`allegedly is designed to block. Id., Abstract, Fig. 6. Instead, Hirose’s RF filter 20
`
`is designed to operate at a frequency that is shifted from the RF power source 15
`
`connected to the substrate. Id.; see also Sections III.B.2 and IV.A.1.
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`Thus, even if a POSITA would have extended Hirose’s filter designed for an
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`RF/RF etching system to the claimed pulsed-DC/RF bias deposition system as
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`Petitioner argues,3 the filter still would not satisfy the requirement of “providing an
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`RF bias at a frequency that corresponds to”/“providing an RF bias that corresponds
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`to” the claimed filter as required by the claims. See Ex. 1001, cls. 1 & 2; see
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`Section IV.C.2.
`
`Petitioner also proclaims that the use of a filter would have stabilized
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`Barber’s pulsed DC power’s waveform and improved its film deposition; that
`
`proclamation contradicts Barber’s express disclosures. See Section IV.C.1(b).
`
`Barber, for example, discloses that “if necessary, the [DC pulse] frequency should
`
`be adjusted to achieve a stable waveform,” but that adjustment is done without a
`
`filter. See Ex. 1005, Fig. 2 (no filter in the reactor system). Additionally, “[t]he
`
`frequency does not affect the film quality,” (Ex. 1005, 8:67-9:3, 9:42-45, 7:59-60),
`
`or the deposition rate (id., 7:47-48). Petitioner does not explain, given these
`
`disclosures, why a POSITA would have used a filter to stabilize Barber’s
`
`waveform or optimize film quality. Likewise, Petitioner does not explain how a
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`filter would or even could have affected other processing parameters, such as pulse
`
`width, reactive gas flow rate or ratio of reactive gas to inert gas, or otherwise
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`would have otherwise affected the deposition rate or film quality in Barber’s
`
`system. See Section IV.C.1(b).
`
`
`3 Petitioner has failed to present any competent evidence for this theory. See
`Section IV.A.2.
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`In fact, the arguments raised here and the usage of the references are
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`substantially the same as those already considered by the Office. Specifically, as
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`noted, the claims were allowed after the inventors explained that the claimed filter
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`was not a design choice, but one specifically tailored to address the problems
`
`associated with the recited reactor combination of an RF bias on the substrate and a
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`DC voltage at the target that alternated between positive and negative regions. Ex.
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`1004 at 978-79 (inventors’ explanation), 992 (notice of allowance); see also Ex.
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`2007 [276 FH] at 434 (reason for allowing 276 claims). But Petitioner still treated
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`the claimed filter as a modular component that can be lifted from a completely
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`different system and planted into the claimed reactor process. The Board should
`
`decline to consider these duplicative arguments under 35 U.S.C. § 325(d).
`
`Finally, the FWD in this case is expected to issue about 4.5 months after the
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`jury trial that will decide the validity of the claims. Ex. 2005 at 4. The real-
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`parties-in-interest have indicated that they would continue to rely on the same
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`references for validity and to purse substantially the same arguments in the district
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`court litigation even if the Board institutes the trial. Ex. 2003 at 30 n.5. Given
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`these facts, the Board should also deny the petition under 35 U.S.C. § 314(a).
`
`II. Fintiv Factors Favor Discretionary Denial Of Institution Under 35
`U.S.C. § 314(a)
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`The Board should exercise its discretion to deny institution under 35 U.S.C.
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`Case IPR2021-00104
`Patent No. 7,381,657
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`§ 314(a) in light of a parallel, co-pending proceeding that is expected to determine
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`the issue of validity months before a final written decision in this case. Apple Inc.
`
`v. Fintiv Inc., IPR2020-00019, Paper 11 (PTAB, March 20, 2020) (precedential).
`
`A. Fintiv Factor #1: No Evidence That The District Court Would
`Grant A Stay If A Proceeding Is Instituted
`Petitioner offers no evidence that Judge Albright would grant a stay if an
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`IPR is instituted; and Judge Albright generally does not do so. Pet. 75; Cont’l
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`Intermodal Grp. – Trucking LLC v. Sand Revolution LLC, Case No. 7:18-cv-
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`00147-ADA (July 22, 2020) (order denying motion to stay instituted IPR). Judge
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`Davila in the Northern District of California also rejected Petitioner’s attempt to
`
`enjoin the Texas litigation from proceeding. Ex. 2004. This factor weighs in favor
`
`of denying institution.
`
`B.
`
`Fintiv Factor #2: Jury Trial Is Expected To Occur Months Before
`The Final Written Decision
`The second Fintiv Factor is "proximity of the court's trial date to the Board's
`
`projected statutory deadline for a final written decision." Fintiv, Paper 11 at 6. As
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`Fintiv explains, "[i]f the court's trial date is earlier than the projected statutory
`
`deadline, the Board generally has weighed this fact in favor of exercising authority
`
`to deny institution under NHK." Id., Paper 11 at 9. Here, jury selection for the
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`trial in the district court action is set to begin on December 27, 2021, about 4.5
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`months before an expected final written decision (“FWD”) in this case. Ex. 2005
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`at 4. This factor therefore favors denying institution.
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`Petitioner speculates that the trial may be delayed, e.g., due to COVID-19.
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`Pet. 75-76. This is pure speculative: Indeed, Judge Albright continues to hold in-
`
`person jury trials, including one that starts today in VLSI Tech. LLC v. Intel Corp.,
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`Case No. 1:19-cv-00977-ADA. There is no evidence to indicate there will be a
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`delay. In addition, the Board has made clear that it “generally take[s] courts’ trial
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`schedules at face value absent some strong evidence to the contrary.” Apple Inc. v.
`
`Fintiv, Inc., IPR2020-00019, Paper 15, at 12 (P.T.A.B. May 13, 2020). Because
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`Petitioner fails to provide any non-speculative evidence regarding the timing of
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`trial, the Board should abide by its general practice and accept the scheduled trial
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`date as it is.
`
`C. Fintiv Factor #3: There Has Been And Will Be Immense
`"Investment In The Parallel Proceeding By The Court And
`Parties"
`The deadline for institution is May 16, 2021. By that time, the parties will
`
`have expended significant resources in the district court litigation complying with
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`the district court’s scheduling order, including:
`
`• Claim construction briefing and Markman hearing
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`• Commencement of fact discovery
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`• Final infringement and invalidity contentions
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`The parties’ investment will continue to increase after institution, especially
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`Patent No. 7,381,657
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`because Judge Albright generally does not grant a stay pending instituted IPRs.
`
`See Factor #1. For example, because the district court trial date precedes the
`
`projected FWD deadline in this proceeding, the parties and the district court will
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`have invested a significant amount of time and resources after institution but
`
`before the FWD deadline in preparation for the trial, including completion of fact
`
`and expert discovery, pre-trial motion practices, trial preparation, trial and post-
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`trial motions.
`
`The Board has found that “additional investment of time and resources by
`
`the District Court and the parties” occurring “after institution but before our final
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`decision” also weighs “strongly in favor of denying institution.” Bentley Motors
`
`Ltd. v. Jaguar Land Rover Ltd., IPR2019-01539, Paper 16, at 9-10 (P.T.A.B. Oct.
`
`2, 2020). Factor 3 therefore weighs strongly in favor of denying institution to
`
`avoid duplicative efforts.
`
`D. Fintiv Factor #4: There Is Substantial "Overlap Between Issues
`Raised In The Petition And In The Parallel Proceeding"
`The real-parties-in-interest have included all the asserted combinations in the
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`district court action and against all challenged claims at issue here. Ex. 2003 at 6
`
`n.1, 19, 22-25. This fact weighs in favor of denying institution. Petitioner asserts
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`that “there is no evidence that the same invalidity grounds sought here will be at-
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`issue in the Texas Litigation.” Pet. 76. But the real-parties-in-interest have
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`indicated in their invalidity contentions that they will continue to use the asserted
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`art for invalidity purposes in the district court, including on cumulative grounds.4
`
`Ex. 2003 at 29-30 & n5. Based on the evidence before the PTAB, the fourth Fintiv
`
`factor weighs in favor of denying institution.
`
`E.
`
`Fintiv Factor #5: The Defendants In The Texas Litigations Are
`Real-Parties-In-Interest
`This factor weighs in favor of denial, as defendants in both Texas Litigations
`
`are real parties-in-interest in this IPR and coordinated with Petitioner in filing the
`
`petition. Pet. 1, 76.
`
`F.
`
`Fintiv Factor #6: "Other Circumstances That Impact The Board's
`Exercise Of Discretion, Including The Merits" Favor Non-
`Institution
`Petitioner claims that they were diligent in filing the petition and the petition
`
`is strong. Pet. 76-77. Patent Owner presents its response on the merits in Sections
`
`III-V, which demonstrates that Petitioner has not shown a reasonable likelihood
`
`that it would prevail on at least one claim.
`
`In sum, the Board should exercise discretion to deny institution under the
`
`Fintiv decision.
`
`
`4 For example, Petitioner can use Smolanoff, which is substantially the same
`as Licata in relevant part (see Section V). Under the “design choice” theory, the
`RPIs can use any of the other filter references in substantially the same way.
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`Case IPR2021-00104
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`III. Technology Background
`A. The ‘657 invention describes a unique combination that solves a
`problem unique to reactive sputtering
`U.S. 7,381,657 is entitled “Biased Pulse DC Reactive Sputtering of Oxide
`
`Films.” Ex. 1001 at cover. The ‘657 patent provides a packaged solution to
`
`address problems associated with target poisoning in reactive sputtering. Although
`
`the preferred embodiments relate to “deposition of oxide and oxynitride films by
`
`pulsed DC reactive sputter,” (id., 1:11-13), the disclosures in the ’657 patent
`
`techniques used for oxide film deposition can also be used for nitride films. See
`
`Ex. 1001 at 3:5-3:9 (approaches are useful with a broad array of process gasses
`
`“includ[ing] combinations of Ar, N2, O2, C2F6, CO2, CO and other process
`
`gasses”).
`
`The claims of the ‘657 patent require several interrelated steps in a reactor
`
`process. In addition to “providing a process gas” and “providing a magnetic field
`
`to the target,” it also requires at least
`
`• “providing pulsed DC power to the target through a narrow band
`
`rejection filter such that the [voltage on the] target alternates between
`
`positive and negative voltages”; and
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`• “providing an RF bias [at a frequency] that corresponds to the narrow
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`band rejection filter to the substrate”
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`Ex. 1001, 23:2-15 (cl. 1), 23:16-27 (cl. 2).
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`For the ‘657 inventions, the target “provides material to be deposited on
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`[the] substrate.” See id., 5:27-30. In some preferred embodiments, the target “also
`
`functions as a cathode when power is applied to it.” Id., 5:30-32.
`
`
`
`The bipolar pulsed DC, resulting in a target voltage oscillating between
`
`negative and positive potentials, prevents arcing associated with reactively
`
`sputtering films such as oxides, nitrides and oxynitrides. Id., 5:38-41. This is
`
`because in the presence of reactive gases such as oxygen and/or nitrogen, oxides,
`
`nitrides or oxynitrides could build up on the surface of the target. See, id., 11:66-
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`12:9, 4:54-55; Glew (Ex. 2002), ¶ 29. Under steady state DC voltage conditions
`
`(e.g., steady negative voltage conditions), “[t]he insulating surface charges up and
`
`result in arcing during process. This arcing can damage the power supply, produce
`
`particles and degrade the properties of the deposited film.” Id., 4:54-57; see also
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`12:10-15. By reversing the polarity of the target voltage to positive as needed, “the
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`insulating layer on the surface of target . . . is discharged” during the positive
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`period (that is, the surface is neutralized during the period), “and arcing is
`
`prevented.” Id. at 5:39-41, 12:15-12:21.
`
`An 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 the film quality. Id., 5:66-6:6. The use of RF
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`bias power, however, creates the danger that the DC power supply may be
`
`damaged. Id. at 5:56-57. A filter (15) between the pulsed DC power supply and
`
`the target “prevents the bias power from power supply 18 from coupling into
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`pulsed DC powers supply 14.” Id. at 5:56-57. But this is not the whole story
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`because the filter must also ensure that it does not “distort[] the pulses generated
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`by the pulsed-DC power supply.” Ex. 1052 at 1130-31, 1134. This led to the
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`requirement that the RF bias needs to be provided at “[a frequency] that
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`corresponds to the narrow band rejection filter.” Ex. 1001 at cls. 1 & 2.
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`The use of the claimed narrow band rejection filter that operates/rejects at a
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`frequency of the RF bias power on the substrate is a unique insight of the inventors
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`specific to a reactor system/process that combines bipolar pulsed DC power to a
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`target (e.g., to help suppress arcing when reactively sputtering) with an RF bias on
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`a substrate. See Ex. 1004 at 978-79 (Applicants rebutting examiner’s assumption
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`that filter selection is merely a design choice, noting “[t]he narrow band rejection
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`filter allows the combination of pulsed-dc power to the target (where the target
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`voltage is oscillated between positive and negative voltages) and an RF bias on the
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`substrate. A filter that blocks too many of the constituent frequencies of the
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`pulsed DC waveform results in the target voltage not attaining a positive voltage.
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`A filter that does not block the RF bias voltage can result in failure of the DC
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`power supply.”).
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`None of Petitioner’s references teaches the use of a narrow-band rejection
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`filter in a claimed reactor process. For example, none of Barber, Belkind, Sproul
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`and Kelly, which all allegedly applied a bipolar pulsed DC power to a target and an
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`RF bias to a substrate, suggested the use of a filter between the DC power supply
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`and the target. See Exs. 1005, 1008, 1011, 1048, 1059. Petitioner’s key reference
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`on the filter limitation, Hirose, involves a reactor system/process using only RF
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`power supplies for etching and therefore lacking a target. See Ex. 1006, Fig. 1;
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`Pet. 23 (admitting that Hirose is about reactive ion etching). Furthermore, Hirose
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`teaches that the relied-on filter 20 coupled to RF power supply 14 is frequency-
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`shifted from the frequency of the RF bias power supply 15 to the substrate. See
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`Pet. 20 (citing Hirose Fig. 1); Ex. 1006, Abstract; 5:58-61, Fig. 6 (to control
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`reactor wall erosion, frequency of Hirose’s filter 20 is shifted from the “optimum
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`resonant point” with RF bias power supply 15 to a sub-optimal frequency).
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`As another example, Petitioner asserts that the configuration in Figure 1a of
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`the ‘657 patent was “nothing new” and was taught in manuals by the “same
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`manufacturer of the DC [] supply exemplified in the [‘657] patent.” Pet. 10.
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`Petitioner, however, produces no evidence that the “RF filter” referenced in these
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`documents (Exs. 1024-1026 & 1062) is a claimed “narrow band rejection filter”
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`as opposed to, for example, a low-pass filter with the proper cut-off frequency. See
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`Pet. 10-11,5 25-28. Similarly, Petitioner provides no analysis on whether those
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`reactors ever supplied a claimed bipolar pulsed DC power supply to the target.6 Id.
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`5 Petitioner also cites to its expert’s declaration (Ex. 1002) “generally.” Pet.
`11. The Board should decline to consider this attempt to impermissibly
`incorporate the expert testimony by reference. 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).
`6 DC power supplies can be implemented to provide pulsed DC power to
`prevent arcing, but Petitioner fails to suggest or argue that such implementations
`were disclosed and that they were combined with RF bias to the substrate and the
`claimed filter in the prior art.
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`The art presented by Petitioner therefore does not contradict the examiner’s
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`determination that the combinations recited in the challenged claims were
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`patentable.
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`B.
`Prior art fails to teach the solution claimed by the ‘657 patent
`All grounds of challenge rely on the following two references: Barber (Ex.
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`1005) and Hirose (Ex. 1006). The combination, however, does not teach all
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`limitations in the challenged claims, including elements 1(c)-(d) and 2(c)-(d),
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`“providing [bipolar] pulsed DC power to the target through a narrow band
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`rejection filter such that the target alternates between positive and negative
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`voltages; providing an RF bias at a frequency that corresponds to the narrow band
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`rejection filter to the substrate” and “providing pulsed DC power to the target
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`through a narrow band rejection filter such that the voltage on the target alternates
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`between positive and negative voltages; providing an RF bias that corresponds to
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`the narrow band rejection filter to the substrate.”
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`1.
`Barber does not use any RF filter with its DC power supply
`Petitioner acknowledges that Barber “does not expressly disclose … the
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`[claimed] filter features . . . added during prosecution.” Paper 2 at 3. Barber
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`involves the use of a rotating magnetron reactive sputtering system/process to
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`achieve a “sufficiently low” “surface roughness for [an] insulating layer” for
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`depositing high-quality piezoelectric film. Ex. 1005, 3:1-13.
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`Neither the reactor in Barber nor that in the incorporated-by-reference Miller
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`Application (see Ex. 1005, 2:13-21, 9:17-18) depicts an RF filter between the
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`supposedly bipolar pulsed DC supply and the target. See Ex. 1005, Fig. 2; Ex.
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`1060, Fig. 2 (reproduced below). In both configurations, element 260 is the target
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`and 225 is the anodic ring. Ex. 1005, 6:5-6; Ex. 1060, 7:1-5 (original page
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`number).
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`
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`Barber, Fig. 2
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`
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`Miller Application, Fig. 2
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`
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`Barber’s method requires “determining the ‘cross-over point’ in the
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`[deposition] process.” Ex. 1005, 6:37-38, 8:45-48. The cross-over point is “the
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`point at which a pressure increase in the chamber 210 becomes non-linear with the
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`flow of reactive gases, and this point reflects a reactive gas flow rate that strongly
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`effects a reaction with the target.” Id. at 6:38-42, 8:49-59. Barber carries out its
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`deposition at a reactive gas flow rate “corresponding substantially to, but greater
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`than, the flow rate at the cross-over point,” such as “about 3 sccm above[] the flow
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`rate at the cross-over point.” Id. at 7:19-23, 8:59-63. At this flow rate, “the target
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`will continue to be conductive while depositing a coating on the substrate and
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`poisoning of the target itself is controlled.” Id. at 7:36-40.
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`Barber’s “cross-over point for the flow of a reactive gas into the sputtering
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`chamber is determined with appropriate settings to the pulse frequency and pulse
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`width.” Id. at 7:14-17. Yet, in the two examples in 8:44-10:11, the crossover
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`points were determined “by arbitrarily setting the pulse frequency at 100 kHz and
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`the pulse width at 25 nS.” Ex. 1005, 8:45-48, 9:29-32. This suggests that cross-
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`over points are not sensitive to frequency pulses and frequency widths. Glew, ¶ 54
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`(a skilled artisan knew