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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,
`
`v.
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`DEMARAY LLC
`Patent Owner.
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`___________________
`
`Case IPR2021-00104
`Patent No. 7,381,657
`___________________
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`
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`PATENT OWNER’S RESPONSE
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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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`TABLE OF CONTENTS
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`Case IPR2021-00104
`Patent No. 7,381,657
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`Page
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`
`I.
`Introduction ................................................................................................... 1
`The Unique Insights Of The ’657 Inventions ............................................... 3
`II.
`III. Claim Construction ..................................................................................... 10
`IV. Hirose Is Not Prior Art ............................................................................... 12
`A.
`Legal Standards ................................................................................ 13
`B.
`Evidence Of Conception And Reduction To Practice ..................... 15
`1.
`The Conception, Design, And Construction Of The
`Claimed Reactor Process ....................................................... 16
`Testing Confirms The Claimed Reactor Process ................... 30
`2.
`The Evidence Maps To The Challenged Claims ................... 33
`3.
`The Petition Fails To Demonstrate That Any Challenged Claim Is
`Invalid Based On Barber And Hirose ......................................................... 39
`A.
`Prior Art Neither Teaches, Nor Suggests, The Claimed
`Narrow Band Rejection Filter .......................................................... 41
`1.
`The combination does not disclose ”providing a pulsed
`DC power to the target through narrow band rejection
`filter” ...................................................................................... 42
`The combination does not disclose “an RF bias [at a
`frequency] that corresponds to the narrow band
`rejection filter” ....................................................................... 43
`Barber’s process does not involve reconditioning ................. 46
`3.
`A POSITA Would Not Have Included The Claimed Filter In
`Barber’s Process ............................................................................... 48
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`V.
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`2.
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`B.
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`1.
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`Page
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`2.
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`3.
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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 .................................................................. 49
`There is no competent evidence of risk of damage to
`Barber’s power source 230 due to RF coupling .................... 60
`The lack of teaching and suggestion of the need for a
`claimed filter in the claimed reactor system shows
`objective evidence of non-obviousness ................................. 68
`Same Deficiencies Exist In Analysis Of Other Claims .................... 69
`C.
`VI. CONCLUSION ........................................................................................... 70
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`TABLE OF AUTHORITIES
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`Case IPR2021-00104
`Patent No. 7,381,657
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` Page(s)
`
`Cases
`Apator Miitors ApS v. Kamstrup A/S,
`887 F.3d 1293 (Fed. Cir. 2018) .......................................................................... 31
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) ...................................................................... 1, 48
`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) .................................................................... 14, 31
`E.I. du Pont De Nemours & Co. v. Unifrax I LLC,
`921 F.3d 1060 (Fed. Cir. 2019) .................................................................... 14, 16
`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) .......................................................................... 30
`Hyosung TNS Inc. v. Int’l Trade Commission,
`926 F.3d 1353 (Fed. Cir. 2019) .......................................................................... 41
`Linear Tech. Corp. v. Impala Linear Corp.,
`379 F.3d 1311 (Fed. Cir. 2004) .......................................................................... 14
`Microsoft Corp. v. Enfish, LLC,
`662 Fed. App’x 981 (Fed. Cir. 2016) ................................................................. 60
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`Mintz v. Dietz & Watson, Inc.,
`679 F.3d 1372 (Fed. Cir. 2012) .......................................................................... 69
`NFC Tech., LLC v. Matal,
`871 F.3d 1367 (Fed. Cir. 2017) .......................................................................... 29
`Otsuka Pharmaceutical Co., Ltd. v. Sandoz, Inc.,
`678 F. 3d 1280 (Fed. Cir. 2012) ............................................................... 2, 3, 5, 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) .................................................................. 66
`Spansion, Inc. v. ITC,
`629 F.3d 1331 (Fed. Cir. 2010) .......................................................................... 13
`Star Sci., Inc. v. R.J. Reynolds Tobacco Co.,
`655 F.3d 1364 (Fed. Cir. 2011) .......................................................................... 41
`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) ............................................................................ 13
`In re Van Os,
`844 F.3d 1359 (Fed. Cir. 2017) .......................................................................... 67
`Statutes
`35 U.S.C. § 102(e) ............................................................................................. 12, 13
`Other Authorities
`37 C.F.R. § 42.6(a)(3) ................................................................................................ 8
`MPEP § 2136 ........................................................................................................... 12
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`EXHIBIT LIST
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`U.S. Pat. No. 6,117,279 to Smolanoff et al.
`
`Declaration of Dr. Alexander Glew in Support of Patent Owner’s
`Preliminary Response
`
`Real Parties-in-Interest’s First Amended Preliminary Invalidity
`Contentions dated Feb. 12, 2021 in consolidated actions of
`Demaray LLC v. Intel Corp., 6:20-cv-00634-ADA (W.D. Tex.) &
`Demaray LLC v. Samsung Electronics Co., Ltd. et. al., 6:20-cv-
`00636-ADA (W.D. Tex.)
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`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)
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`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
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`EX2002
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`EX2003
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`EX2004
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`EX2005
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`EX2006
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`U.S. Pat. No. 6,306,265 to Fu et al.
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`EX2007
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`RESERVED
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`EX2008
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`EX2009
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`EX2010
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`EX2011
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`EX2012
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`EX2013
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`EX2014
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`Declaration for Pro Hac Vice Admission of Darish Huynh Under
`37 C.F.R. § 42.10(c)
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`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
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`Laboratory Notebook of Mr. Mukundan Narasimhan
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`Copy of “BRPDC first reduction to practice notebook pages and
`data sheets”
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`EX2015
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`Excerpt of a laboratory notebook by Dr. Richard E. Demaray
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`EX2016
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`EX2017
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`EX2018
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`EX2019
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`EX2020
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`EX2021
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`EX2022
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`EX2023
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`EX2024
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`Deposition transcript of Dr. Vivek Subramanian dated August 24,
`2021
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`Deposition transcript of Dr. Vivek Subramanian dated August 25,
`2021
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`Deposition transcript of Mr. Michael Stowell dated August 13,
`2021
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`Declaration of Dr. HongMei Zhang in Support of Patent Owner’s
`Response
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`Declaration of Dr. Rajiv Pethe in Support of Patent Owner’s
`Response
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`Claim Construction Order in W-20-CV-00634-ADA & W-20-CV-
`00636-ADA
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`Defendants’ Sur-reply Claim Construction Brief in W-20-CV-
`00634-ADA & W-20-CV-00636-AD
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`JP2002-43286A to Hirose
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`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
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`EX2026
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`EX2027
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`EX2028
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`Garcia, M., “Designing Planar Magnetron Cathodes: Analysis and
`Experiment,” Abstract
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`Lieberman, M. A. et al., “Principles of Plasma Discharges and
`Materials Processing,” John Wiley & Sons, Inc. (1994)
`
`IPR2021-00106 Petition for Inter Partes Review of U.S. Patent No.
`7,381,657
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`I.
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`Introduction1
`Petitioner has, for multiple independent reasons, failed to show by a
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`preponderance of evidence that the challenged claims are unpatentable. First,
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`every asserted ground relies on Hirose, but Hirose does not qualify as prior art. As
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`explained in Section IV, the inventors conceived and reduced to practice the ’657
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`patent’s inventions on or before July 18, 2001, Hirose’s reference date.
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`Second, even if Hirose qualified as prior art, the combination of Barber and
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`Hirose would not render the challenged claims obvious. The state of the art at the
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`time of the inventions, for example, did not disclose or suggest the use of a narrow
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`band-rejection filter as claimed, in a reactor system that included both bipolar
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`pulsed DC power to a target and a RF power supplying bias to the substrate. See
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`EXS1005, -1011, -1019, -1036, -1047, -1048, -1059 (no filter disclosed); EX1014
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`(low-pass filter used to decouple pulsed DC power to a substrate from RF power
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`used to generate a plasma). Given the materiality of the claimed filter element in
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`the claimed reactor system (see EX1004, 978-79), Petitioner had to show that the
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`missing element was present in the prior art, but could not. Arendi S.A.R.L. v.
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`Apple Inc., 832 F.3d 1355, 1364-66 (Fed. Cir. 2016).
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`Third, Petitioner failed to show any specific reason for including the claimed
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`filter in Barber’s process. As explained in Section V.B.2 below, Barber’s reactor
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`1 All emphasis are added unless otherwise noted.
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`design, which traps plasma and ionic species to the electrodes near the top of the
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`reactor and away from the substrate holder, minimizes the risk of electrical
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`coupling between Barber’s power sources 230 and 235. The risk of coupling and
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`damage to DC power supply is further reduced by maintaining the target as
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`conductive to reduce the arcing events and by keeping the plasma density low.
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`This differs from Hirose, where the high-density plasma and ion particles are
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`between two electrodes, thereby increasing the possibility of electrical coupling
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`between the two power sources connected to the two electrodes through ion
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`conduction. Given these critical differences, unsurprisingly, Petitioner has not
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`demonstrated what improvement to Barber’s designs or processes, if any, a
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`claimed filter could have added over Barber’s existing methods.
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`Fourth, Petitioner’s only rationale for using a claimed narrow band-rejection
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`filter over a low pass filter—not “distort[ing] the shape of the pulsed DC
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`waveform”—came from the inventors. Compare EX2016 at 90:20-91:22, 191:14-
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`193:4, 279:12-22, with EX1052 at 1134, 1456-57. That is hindsight because “the
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`inventor’s own path itself never leads to a conclusion of obviousness; that is
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`hindsight.” Otsuka Pharmaceutical Co., Ltd. v. Sandoz, Inc., 678 F. 3d 1280, 1296
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`(Fed. Cir. 2012).
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`For these and additional reasons described below, Petitioner has not met its
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`burden to show that the challenged claims are unpatentable.
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`II. The Unique Insights Of The ’657 Inventions
`U.S. 7,381,657 provides solutions to certain problems associated with target
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`poisoning that occurs when sputtering material from a target to a substrate in a thin
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`film reactor chamber. The patent’s claims require several interrelated steps in a
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`sputtering process. In addition to “providing a process gas” and “providing a
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`magnetic field to the target,” they also require at least:
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`• “providing pulsed DC power to the target through a narrow band-
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`rejection filter such that the [voltage on the] target alternates between
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`positive and negative voltages”;
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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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`EX1001, 23:2-15 (cl. 1), 23:16-27 (cl. 2). Claim 1 also requires a reconditioning
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`step that includes first reactive sputtering in the metallic mode and then reactive
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`sputtering in the poison mode, whereas claim 2 requires the reactive sputtering be
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`“in a mode between a metallic mode and a poison mode.” Id.
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`In the patented inventions, the target “provides material to be deposited on
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`[the] substrate.” See id., 5:27-30. In some preferred embodiments, the target “also
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`functions as a cathode when power is applied to it.” Id., 5:30-32. A basic system
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`is illustrated in Fig. 1A:
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`Bipolar pulsed DC power to the target (i.e., having a polarity that oscillates
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`between negative and positive voltages) is used to help prevent arcing associated
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`with sputtering films, such as oxides, nitrides and oxynitrides. Id., 5:38-41. This
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`is because, e.g., in the presence of reactive gases such as oxygen and/or nitrogen,
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`films of oxides, nitrides or oxynitrides can build up on the surface of the target.
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`See, id., 11:66-12:9, 4:54-55. Under steady state DC voltage conditions (e.g.,
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`steady negative voltage conditions), “[t]he insulating surface charges up and
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`result[s] in arcing during process[es]. This arcing can damage the power supply,
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`produce particles and degrade the properties of the deposited film.” Id., 4:54-57;
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`see also 12:10-15. By reversing the polarity of the DC voltage to the target to
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`positive as needed, “the insulating layer on the surface of target ... is discharged”
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`during the positive period (that is, the surface is neutralized during the period),
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`“and arcing is prevented.” Id., 5:39-41, 12:15-12:21.
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`RF bias power is supplied to the substrate to, for example, “dandif[y] (sic)
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`[densify]” the deposited film and to “substantially eliminate[]” columnar structures
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`that may negatively affect film quality. Id., 5:66-6:6. The RF bias power,
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`however, risks damaging the pulsed DC power supply by coupling to it through the
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`plasma created within the chamber body. Id., 5:56-57. Indeed, during
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`development of the deposition chambers described, the inventors, including several
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`PhDs with decades of experience in the field, destroyed multiple pulsed DC power
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`supplies when energy from the RF bias power source was not attenuated. See
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`EX1052, 1134, ¶3. To address this issue, the inventors first considered a band-pass
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`filter or low-pass filter between the pulsed DC power supply and the plasma, but
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`determined that such filters would either fail to protect the pulsed DC power
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`supply from the RF bias power signal or prevent critical arc suppression
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`technology from functioning properly. Id. The inventors eventually discovered
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`that a narrow band-rejection filter, as described in the specification and claims,
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`could overcome the problem of catastrophic failure of the pulsed DC power
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`supply, including its output electrometer circuit, during operation. Id. As the
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`specification describes, the inventors overcame these problems by placing a narrow
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`band-rejection filter between the pulsed DC power supply and the target that
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`“prevents the bias power from power supply 18 from coupling into pulsed DC
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`powers supply 14.” EX1001, 5:56-57.
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`The use of the claimed narrow band-rejection filter to which a frequency of
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`the RF bias power on the substrate corresponds is a unique insight of the inventors
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`specific to a reactor process that combines bipolar pulsed DC power to a target
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`(e.g., to help suppress arcing) with an RF bias on a substrate (e.g., to densify
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`deposited films). In their testing, the inventors discovered that a filter that rejects a
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`signal within “a narrow band centered on the RF frequency of the RF bias,
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`protected the pulsed DC power supply from the RF energy while not distorting the
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`pulses generated by the pulsed DC power supply applied to the target.” EX1052,
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`1134. They also explained to the examiner why such a filter was not a mere design
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`choice:
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`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.
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`Id., 1456-57; see EX1004, 978-79 (similar). After the inventor’s explanation of
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`their novel and non-obvious insights, the examiner allowed the issued claims.
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`EX1004, 992. This exact same reasoning applies to the challenges raised here.
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`None of Petitioner’s references teaches the use of a narrow band-rejection
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`filter in a reactor process as described in the ’657 patent. For example, none of
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`Barber, Belkind, Sproul, Hong and Kelly, which all allegedly applied bipolar
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`pulsed DC power to a target and an RF bias to a substrate, suggested a need for a
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`filter between the DC power supply and the target. See EXS1005, -1008, -1011, -
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`1019, -1036, -1047, -1048, -1059; EX2016, 77:15-79:2, 79:10-80:25, 81:21-86:7,
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`127:21-130:5; EX2017, 520:14-522:14, 583:8-9; 585:15-585:25, 588:2-11. Even
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`when a reference discloses a filter placed in series with a pulsed DC power supply
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`to reject RF power used a low pass filter—as opposed to the claimed narrow band-
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`rejection filter. See EX1014, 3 & Fig. 1 (a “low-pass unit” placed between the
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`pulsed DC bias power to substrate and substrate to block interference from 2MHz-
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`ICP power source); EX2016, 90:14-19.
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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 power supply exemplified in the ’657 patent.” Pet., 10-11.
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`There is no evidence, however, that the “RF filter” or “ac blocking filter”
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`referenced in these documents is a narrow band-rejection filter. See id., 10-11,
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`26-27; Glew (EX2009) ¶¶20, 165 (explaining that the referenced “ac blocking
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`filter” 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
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`don’t explicitly say what type of RF filter to use”).2 Indeed, even declarants that
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`Petitioner located after the institution could not say what types of filters were used
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`at the time of the invention for reactors with DC power sources. EX2018 (Stowell)
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`at 60:18-25 (personally implemented “[l]ow pass”), 114:3-10 (could not recall
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`what types of RF filters used), 116:11-117:15 (could not recall what type of filter
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`in response to manuals).
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`This is unsurprising because the only advantage Petitioner and its expert
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`assert for using a narrow band-rejection filter over a low-pass filter in their prior
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`art combinations is that a low-pass filter would “distort” or “degrade” the square
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`shape of a DC pulse, an insight coming solely from the inventors and not any prior
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`art references. EX2016, 90:20-91:15, 112:11-113:6, 159:22-160:8, 163:22-164:7,
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`164:21-25 (“It is true…that I did not cite a single reference which explicitly stated
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`that a narrow band-rejection filter would preserve the shape of a square wave.”).
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`But, “the inventor’s own path itself never leads to a conclusion of obviousness;
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`that is hindsight.” Otsuka, 678 F. 3d at 1296.
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`The “reconditioning” step of claim 1 involves operating the chamber during
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`reactive sputtering in “metallic mode” and then in “poison mode” to first remove
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`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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`any film built up on the target such that the target is substantially metallic
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`(EX1001, 11:27-37) and then to resume sputtering (id., 10:41-48). Metallic mode
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`means “a mode of operation in which the surface of the target is substantially
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`metallic.” EX1001, 11:27-30. Poison Mode means “mode of operation in which
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`the rate of the thin film formation on the surface of the target equals or exceeds the
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`rate of sputter removal of the surface of the target.” Id., 12:5-9. Non-limiting
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`examples of metallic modes are provided in the specification; for example, metallic
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`modes can optionally be initiated by adding little or no reactive gas (e.g., id.,
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`11:38-50 (examples with no reactive gas), 17:6-14 (same)) and can optionally
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`involve “incomplete oxidation of film deposited on substrate,” “higher index
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`films,” falling voltages at the target, and a “higher impedance magnetron
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`discharge.” Id., 11:30-37. These are just implementation examples. Similarly,
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`non-limiting examples of poison modes are provided in the specification; for
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`example, poison modes can optionally involve higher voltages and lower
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`impedance of magnetron discharge for certain oxide layer embodiments. See id.,
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`11:27-37. These are also just implementation examples.
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`Of note, the ’657 patent and independent claim 1 are not limited to oxides.
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`See id., 16:19-24 (“depositions of various films in embodiments”), 7:47-52 (list
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`deposited materials other than oxides), 9:4-10 (listing reactive gases other than
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`oxygen).
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`III. Claim Construction
`The ’657 patent claims require:
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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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`EX1001, cls. 1 & 2. In its Institution Decision, the Board invited the parties to
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`address the construction of the term. See Paper 13 at 38. As the district court in
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`parallel litigation already determined, the above term should be construed
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`according to their plain and ordinary meaning, which the parties to the litigation
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`agree requires the claimed filter to have a rejection band set at a frequency of the
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`RF bias power supply. See EX2021; EX2022 at 7-10.
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`The parties’ understanding comports with the specification, which discloses
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`a “[f]ilter 15 [that] prevents the bias power supply from power supply 18 from
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`coupling into pulsed DC power supply 14.” EX1001, 5:56–57. The specification
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`further states that “[i]n some embodiments, power supply 18 is a 2 MHz RF power
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`supply ... [t]herefore, filter 15 is a 2 MHz band rejection filter.” Id., 5:57–61. Such
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`a filter, with, for example, a bandwidth of about 100 kHz, “prevents the 2 MHz
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`power from the bias to substrate 16 from damage power supply 18.” Id., 5:61-65.
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`During prosecution of the ’657 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.”).
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`To the extent any ambiguity remains, “claims should be read in a way that
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`avoids ensnaring prior art if it is possible to do so.” Harris Corp. v. IXYS Corp.,
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`114 F.3d 1149, 1153 (Fed. Cir. 1997). That is, a POSITA would not understand
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`the claim term “providing an RF bias that corresponds to the narrow band-rejection
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`filter” to encompass Hirose’s filter 20 in Figure 1 whose only operating frequency
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`is materially offset from the RF bias frequency by design.
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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 the ’657 patent’s date of conception and actual reduction to practice.
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`As such, every ground in the Petition fails. In particular, Petitioner does not assert
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`that Hirose is entitled to a reference date earlier than its July 18, 2001 filing date.
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`See Pet., 5 (asserting that Hirose “issued from an application filed July 18, 2001,”
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`and “qualif[ies] as prior art under § 102(e)”). Nor can Petitioner, because pre-AIA
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`§ 102(e) that governs the instant proceeding “does not provide for use of a U.S.
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`patent as [a § 102(e)] reference as of its foreign filing date.” In re Giacomini, 612
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`F.3d 1380, 1384 (Fed. Cir. 2010) (quoting In re Hilmer, 359 F.2d 859, 862 (CCPA
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`1966)); MPEP § 2136 (“No benefit of the filing date of the foreign application is
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`Patent No. 7,381,657
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`given under pre-AIA 35 U.S.C. 102(e) for prior art purposes.”).
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`The record evidence demonstrates that the ’657 inventors conceived and
`
`reduced to practice the ’657 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.
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`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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`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 ’657 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.3
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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
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`with the inventive process ... Circumstantial evidence of an independent nature
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`may also corroborate. Additionally, oral testimony from someone other than the
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`alleged inventor may corroborate.” Linear Tech. Corp. v. Impala Linear Corp.,
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`
`3 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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`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
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`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 ’657 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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`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 ’657 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
`Reactor Process
`At the time of the inventions in 2001, the inventors were working at a
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`company called Symmorphix, Inc. (the original Applicant) to develop improved
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`reactor systems and methods for processing thin films. EX1052, 159
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`(“Symmorphix, Inc. is the Assignee”); Zhang, ¶3; Pethe
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