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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`APPLIED MATERIALS, INC.
`Petitioner,
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`v.
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`DEMARAY LLC
`Patent Owner.
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`
`___________________
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`Case IPR2021-00104
`Patent No. 7,381,657
`___________________
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`PATENT OWNER'S RESPONSE TO PETITONER’S NOTICE
`REGARDING MULTIPLE PETITIONS
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`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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`10914337
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`Case IPR2021-00104
`Patent No. 7,381,657
`As the Board recognizes, “one petition should be sufficient to challenge
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`the claims of a patent in most situations.” PTAB Consolidated Trial Practice
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`Guide (“TPG”) (Nov. 2019) at 59. Petitioner instead filed two parallel
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`petitions on the ‘657 patent challenging the same set of claims with no material
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`differences and none of the exceptions articulated in the TPG. For example,
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`Petitioner clearly can attack all the issues claims of the patent in a single
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`petition; and it does not assert there is any priority dispute. See Paper 2
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`generally. As such, the Board should not institute more than one petition.
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`Petitioner nevertheless argues that the Board should entertain both of its
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`petitions because it also represents the interest of Samsung and Intel and
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`because only two petitions are filed among the three of them. Paper 2 at 2-3.
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`That argument makes no sense: had Samsung and Intel filed petitions on their
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`own, the Board would have also treated those petitions as either parallel or
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`serial and they would also have to explain why the filing of those follow-on or
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`parallel petitions are justified, including under the General Plastics factors.
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`The purported existence of a “wealth of prior art against the ‘657 patent”
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`is also not an excuse for filing multiple petitions. Were that reason sufficient
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`to justify the filing of multiple petitions, the Board would not have required
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`petitioners who filed multiple petitions to provide “a succinct explanation of
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`the differences between the petitions, why the issues addressed by the
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`differences are material, and why the Board should exercise its discretion to
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`Case IPR2021-00104
`Patent No. 7,381,657
`institute additional petitions if it identifies one petition that satisfies petitioner’s
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`burden under 35 U.S.C. § 314(a).” TPG at 60. Petitioner fails to make the
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`requisite showing.
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`Petitioner instead first asserts that all the art asserted in the two petitions
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`is allegedly “new.” Paper 2 at 3. But as explained in the POPRs for IPR2021-
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`00103 and IPR2021-00105, the combinations were used in substantially the
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`same way as the Office has already considered. See 325(d) sections the POPRs
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`for IPR2021-00104 and IPR2021-00106. Specifically, the claims were allowed
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`after the applicants traversed the examiner’s theory that filter choice was
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`merely a design choice, and explained that filter was important to the proper
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`operation of the claimed reactor system that combines a bipolar pulsed DC
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`power to the target and an RF bias on the substrate. Ex. 1004, 978-79. In
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`particular, the inventors explained that claimed filter needed to both (1) not to
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`filter out too many frequencies and distort the DC pulse waveform and (2) not
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`to allow RF power to couple into the DC power. Id.
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`In both petitions, Petitioner uses the base reference(s) for limitations
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`related to the claimed reactor and relies on the secondary “filter” reference
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`directed a totally different reactor system to argue that a POSITA would have
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`plucked the filter from the secondary “filter” reference and plug it into the
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`claimed reactor system. See IRP2021-00104 Pet. 23-27; IPR2021-00106 Pet.
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`29-32. This is summarized in the table below:
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`Petition 1 (IPR2021-00104)
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`Case IPR2021-00104
`Patent No. 7,381,657
`Petition 2 (IPR2021-00106)
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`reactor
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`Barber or Barber + Belkind1
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`Licata + Kelly
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`filter
`
`Hirose
`
`Collins
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`background
`knowledge
`
`Ex. 1023, Ex. 1013, Ex. 1057,
`Ex. 1058, Ex. 1016, Ex. 1006,
`Ex. 1009, Ex. 1011, Ex. 1012,
`Ex. 1017, Ex. 1018, Ex. 1019,
`Ex. 1020, Ex. 1021, Ex. 1010;
`Ex. 1024-1026, 1062, 1067
`
`Ex. 1023, Ex. 1013, Ex.
`1057, Ex. 1058, Ex. 1016,
`Ex. 1006, Ex. 1009, Ex.
`1011, Ex. 1012, Ex. 1017,
`Ex. 1018, Ex. 1019, Ex.
`1020, Ex. 1021, Ex. 1010
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`Reason-to-
`combine
`arguments
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`to incorporate filter “to prevent
`the RF power form RF supply
`235 from affecting DC supply
`230 during Barber’s process”
`(Pet. 23; see also Pet. 18, 25)
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`“the type of filter is a mere
`design choice,” and “[t]he filter
`will necessarily be designed to
`reflect the frequency of
`operation” (Pet. 24)
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`“to minimize the filter’s impact
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`“to prevent the specific RF
`power from bias power
`supply 27 from affecting DC
`power supply 20” (Pet. 29)
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`“the type of filter is a mere
`design choice” & “[t]he filter
`will necessarily be designed
`to reflect the frequency of
`operation” (Pet. 30)
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`“to minimize the impact the
`other RF source (and the
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`1 Belkind and Kelly are both used to show the existence of a bipolar pulsed DC
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`power system. Compare Ex. 1008, Fig. 1 with Ex. 1059, Fig. 2.
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`on the pulsed-DC waveform
`(not significantly degrade the
`waveform signal through
`filtering) while still protecting
`the DC supply 230 from the
`specific frequency signals of
`RF supply 235” Pet. 25
`
`
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`“to prevent RF power from RF
`supply from damaging DC
`supply 230, and to reduce
`interference so that a stable
`waveform is provided to
`achieve optimal film deposition
`…” (Pet. 25)
`
`
`
` implementations “achieved
`through using known design/
`engineering skills” (Pet. 27)
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`Case IPR2021-00104
`Patent No. 7,381,657
`filter itself) would have on
`the pulsed-DC waveform
`(e.g., not filter out the DC
`waveform signals while still
`protecting the DC supply 20
`from the specific frequency
`signals of RF bias power
`supply 27” (Pet 30)
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`“the use and benefits of
`filters in deposition
`systems/processes to block
`interference/current from one
`power supply from another
`power supply was known,
`and thus would have been in
`the mind of a POSITA …”
`(Pet. 30)
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`implementations “achieved
`through the use of known …
`design, and relevant
`skills…” (Pet. 31)
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`Regarding Petitioner’s purported difference—that Barber/Barber-
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`Belkind does not disclose the use of a filter in a claimed reactor system, while
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`Licata discloses an RF filter with a DC power supply (Paper 2 at 3)—Petitioner
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`Case IPR2021-00104
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`omits one important fact. In the Licata-Kelly combination, Licata’s DC power
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`is not disclosed as providing an alternating positive and negative voltages on
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`the target. IPR2021-00106 Pet. 20 (using Kelly for this limitation). Kelly’s
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`bipolar pulsed DC power system, however, also does not mention the use of a
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`filter. See Ex. 1059 generally. This is also true for other pulsed DC power/RF
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`bias reactors systems like Belkind, Sproul and Kelly1. Ex. 1008, Ex. 1011 and
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`Ex. 1048 generally. Hence, there is really no difference in the base reactor
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`system: none of these systems had a filter coupled to the pulsed DC power.
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`In short, in both petitions, Petitioner starts with the same base reactor
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`system with no filter and then makes the same design-choice argument as to
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`why a POSITA would have had a reason to add a claimed filter to the reactor
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`system. Given the way the references are applied, there is no justification for
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`Petitioner to have filed two petitions and to have thus “place[d] a substantial
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`and unnecessary burden on the Board the patent owner.” TPG at 59.
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`Petitioner’s clearly harassing tactic “raise[s] fairness, timing and efficiency
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`concerns.” Id. Such conduct should be discouraged and admonished.
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`Date: February 16, 2021
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`10914337
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`Respectfully submitted,
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`/Hong Zhong/
`Hong Zhong, /(Reg. No. 66,530)
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067-4276
`Telephone: (310) 277-1010
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`Case IPR2021-00104
`Patent No. 7,381,657
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`CERTIFICATE OF SERVICE
`
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`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on February
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`16, 2021, a copy of the foregoing document PATENT OWNER’S
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`RESPONSE TO PETITIONER’S NOTICE OF MULTIPLE PETITIONS
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`was served by electronic mail upon the following:
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`PAUL HASTINGS LLP
`
`Naveen Modi, Reg. No. 46,224
`PH-Applied_Materials-Demaray-IPR@paulhastings.com
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`Joseph E. Palys, Reg. No. 46,508
`PH-Applied_Materials-Demaray-IPR@paulhastings.com
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`Howard Herr (pro hac admission to be requested)
`PH-Applied_Materials-Demaray-IPR@paulhastings.com
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`
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`/Pia S. Kamath/
`Pia S. Kamath
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`10914337
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