`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`APPLIED MATERIALS, INC.
`Petitioner,
`
`v.
`
`DEMARAY LLC
`Patent Owner.
`
`
`___________________
`
`Case IPR2021-00105
`Patent No. 7,544,276
`___________________
`
`
`PATENT OWNER'S RESPONSE TO PETITONER’S NOTICE
`REGARDING MULTIPLE PETITIONS
`
`
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`10913630
`
`
`
`
`
`
`Case IPR2021-00105
`Patent No. 7,544,276
`As the Board recognizes, “one petition should be sufficient to challenge
`
`the claims of a patent in most situations.” PTAB Consolidated Trial Practice
`
`Guide (“TPG”) (Nov. 2019) at 59. Petitioner instead filed two parallel
`
`petitions on the ‘276 patent challenging the same set of claims with no material
`
`differences and none of the exceptions articulated in the TPG. For example,
`
`Petitioner clearly can attack all the issues claims of the patent in a single
`
`petition; and it does not assert there is any priority dispute. See Paper 2
`
`generally. As such, the Board should not institute more than one petition.
`
`Petitioner nevertheless argues that the Board should entertain both of its
`
`petitions because it also represents the interest of Samsung and Intel and
`
`because only two petitions are filed among the three of them. Paper 2 at 2-3.
`
`That argument makes no sense: had Samsung and Intel filed petitions on their
`
`own, the Board would have also treated those petitions as either parallel or
`
`serial and they would also have to explain why the filing of those follow-on or
`
`parallel petitions are justified, including under the General Plastics factors.
`
`The purported existence of a “wealth of prior art against the ‘276 patent”
`
`is also not an excuse for filing multiple petitions. Were that reason sufficient
`
`to justify the filing of multiple petitions, the Board would not have required
`
`petitioners who filed multiple petitions to provide “a succinct explanation of
`
`the differences between the petitions, why the issues addressed by the
`
`differences are material, and why the Board should exercise its discretion to
`- 1 -
`
`10913630
`
`
`
`
`Case IPR2021-00105
`Patent No. 7,544,276
`institute additional petitions if it identifies one petition that satisfies petitioner’s
`
`burden under 35 U.S.C. § 314(a).” TPG at 60. Petitioner fails to make the
`
`requisite showing.
`
`Petitioner instead first asserts that all the art asserted in the two petitions
`
`is allegedly “new.” Paper 2 at 3. But as explained in the POPRs for IPR2021-
`
`00103 and IPR2021-00105, the combinations were used in substantially the
`
`same way as the Office has already considered. See 325(d) sections the POPRs
`
`for IPR2021-00103 and IPR2021-00105. Specifically, the claims were allowed
`
`because prior art of record did not disclose the claimed reactor system
`
`“combined with” the claimed filter. Ex. 1004 at 382, 434. The applicants
`
`explained that filter choice was not a mere design choice, but was important to
`
`the proper operation of the claimed reactor system that combined a bipolar
`
`pulsed DC power to the target and an RF bias on the substrate. Ex. 1052 at
`
`1456-57, 1134. The inventors explained that the claimed filter needed to both
`
`(1) not to filter out too many frequencies and distort the DC pulse waveform
`
`and (2) not to allow RF power to couple into the DC power. Id.
`
`In both petitions, Petitioner uses the base reference(s) for limitations
`
`related to the claimed reactor, and relies on the secondary “filter” reference
`
`directed a totally different reactor system to argue that a POSITA would have
`
`plucked the filter from the secondary “filter” reference and plug it into the
`
`10913630
`
`
`- 2 -
`
`
`
`Case IPR2021-00105
`Patent No. 7,544,276
`claimed reactor system. See IRP2021-00103 Pet. 30-36; IPR2021-00105 Pet.
`
`37-40. This is summarized in the table below:
`
`
`
`Petition 1 (IPR2021-00103)
`
`Petition 2 (IPR2021-00105)
`
`reactor
`
`Barber or Barber + Belkind1
`
`Licata + Kelly
`
`filter
`
`Hirose
`
`Collins
`
`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
`
`Reason-to-
`combine
`arguments
`
`filter helps “providing a stable
`waveform to the target so as to
`optimize film deposition by
`reducing or eliminating
`electrical interference from RF
`power supply” (Pet. 30-31)
`
`“the waveform of Licata’s
`pulsed DC power supply 20
`would determine the
`deposited film quality” (Pet.
`38)
`
`“the type of filter is a mere
`design choice,” and “[t]he filter
`will necessarily be designed to
`
`“the type of filter is a mere
`design choice” & “[t]he filter
`will necessarily be designed
`
`
`1 Belkind and Kelly are both used to show the existence of a bipolar pulsed DC
`
`power system. Compare Ex. 1008, Fig. 1 with Ex. 1059, Fig. 2.
`
`10913630
`
`
`- 3 -
`
`
`
`reflect the frequency of
`operation” (Pet. 31-32)
`
`Case IPR2021-00105
`Patent No. 7,544,276
`to reflect the frequency of
`operation” (Pet. 38)
`
`remote RF energy blocking: “A
`POSITA would have
`considered the known use and
`benefits of filters in plasma
`system for blocking
`interference /current of one
`power supply from another
`when considering Barber” (Pet.
`32)
`
`“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. 39)
`
` “a filter would aid in
`preventing the RF power from
`the RF power supply from
`damaging the power supply”
`(Pet. 33)
`
`“prevent such signals from
`RF bias power supply from
`affecting DC power supply
`20 during Licata’s process”
`(Pet. 37)
`
`implementations “achieved
`through using known design
`and engineering skills” Pet. 35
`
`implementations “achieved
`through the use of known …
`design, and relevant
`skills…” Pet. 39-40.
`
`Regarding Petitioner’s purported difference—that Barber/Barber-
`
`Belkind does not disclose the use of a filter in a claimed reactor system, while
`
`Licata discloses an RF filter with a DC power supply (Paper 2 at 3)—Petitioner
`
`omits one important fact. In the Licata-Kelly combination, Licata’s DC power
`
`10913630
`
`
`- 4 -
`
`
`
`Case IPR2021-00105
`Patent No. 7,544,276
`is not disclosed as providing an alternating positive and negative voltages on
`
`the target. IPR2021-00105 Pet. 27 (using Kelly for this limitation). Kelly’s
`
`bipolar pulsed DC power system, however, also does not mention the use of a
`
`filter. See Ex. 1059 generally. This is also true for other pulsed DC power/RF
`
`bias reactors systems like Belkind, Sproul and Kelly1. Ex. 1008, Ex. 1011 and
`
`Ex. 1048 generally. Hence, there is really no difference in the base reactor
`
`system: none of these systems had a filter coupled to the pulsed DC power.
`
`In short, in both petitions, Petitioner starts with the same base reactor
`
`system with no filter and then makes the same design-choice argument as to
`
`why a POSITA would have had a reason to add a claimed filter to the reactor
`
`system. Given the way the references are applied, there is no justification for
`
`Petitioner to have filed two petitions and to have thus “place[d] a substantial
`
`and unnecessary burden on the Board the patent owner.” TPG at 59.
`
`Petitioner’s clearly harassing tactic “raise[s] fairness, timing and efficiency
`
`concerns.” Id. Such conduct should be discouraged and admonished.
`
`Date: February 16, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Hong Zhong/
`H. Annita Zhong, (Reg. No. 66,530)
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067-4276
`Telephone: (310) 277-1010
`
`10913630
`
`
`- 5 -
`
`
`
`Case IPR2021-00105
`Patent No. 7,544,276
`
`CERTIFICATE OF SERVICE
`
`
`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on February
`
`16, 2021, a copy of the foregoing document PATENT OWNER’S
`
`RESPONSE TO PETITIONER’S NOTICE OF MULTIPLE PETITIONS
`
`was served by electronic mail upon the following:
`
`PAUL HASTINGS LLP
`
`Naveen Modi, Reg. No. 46,224
`PH-Applied_Materials-Demaray-IPR@paulhastings.com
`
`Joseph E. Palys, Reg. No. 46,508
`PH-Applied_Materials-Demaray-IPR@paulhastings.com
`
`Howard Herr (pro hac admission to be requested)
`PH-Applied_Materials-Demaray-IPR@paulhastings.com
`
`
`
`
`
`Susan M. Langworthy
`Susan M. Langworthy
`
`
`
`10913630
`
`
`- i -
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
