throbber
Trials@uspto.gov
`571-272-7822
`
`Paper 13
`Date: May 12, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLIED MATERIALS, INC.,
`Petitioner,
`v.
`DEMARAY LLC,
`Patent Owner.
`
`IPR2021-00105
`Patent 7,544,276 B2
`
`
`
`
`
`
`
`
`
`Before CHRISTOPHER L. CRUMBLEY, KRISTINA M. KALAN, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge KALAN.
`
`Opinion Concurring filed by Administrative Patent Judge CRUMBLEY.
`
`KALAN, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`

`

`IPR2021-00105
`Patent 7,544,276 B2
`
`
`I.
`INTRODUCTION
`Applied Materials, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting inter partes review of claims 1–13 of U.S. Patent No. 7,544,276
`B2 (Ex. 1001, “the ’276 patent”). Demaray LLC (“Patent Owner”) filed a
`Preliminary Response to the Petition (Paper 8, “Prelim. Resp.”). Pursuant to
`our authorization (Paper 9), Petitioner filed a Reply (Paper 10, “Reply”), and
`Patent Owner filed a Sur-Reply (Paper 12, “Sur-Reply”). Petitioner also
`filed a Petitioner’s Notice Regarding Multiple Petitions (Paper 2 (“Notice”))
`to which Patent Owner filed a Response (Paper 7 (“Notice Response”)).
`To institute inter partes review, we must determine that the
`information presented in the Petition shows “there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a). The Board, however, has
`discretion to deny a petition even when a petitioner meets that threshold.
`Id.; see, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016)
`(“[T]he agency’s decision to deny a petition is a matter committed to the
`Patent Office’s discretion.”); General Plastic Indus. Co. v. Canon Kabushiki
`Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential as to
`§ II.B.4.i) (recognizing the same); see also Patent Trial and Appeal Board
`Consolidated Trial Practice Guide (Nov. 2019) (“CTPG”) 55–63, available
`at https://www.uspto.gov/TrialPracticeGuideConsolidated (identifying
`considerations that may warrant exercise of this discretion).
`For the reasons discussed below, after considering the parties’
`submissions and the evidence of record, we determine it is appropriate to
`exercise our discretion and decline to institute inter partes review.
`
`2
`
`

`

`IPR2021-00105
`Patent 7,544,276 B2
`
`
`A. Related Proceedings
`The parties identify IPR2021-00103 as another proceeding filed by
`Petitioner against the ’276 patent. Pet. 6–7; Paper 6, 2. Patent Owner also
`identifies IPR2021-00104 and IPR2021-00106, which challenge U.S. Patent
`No. 7,381,657 B2, as related matters. Paper 6, 2.
`The parties also identify Applied Materials, Inc. v. Demaray LLC, No.
`5-20-cv-05676 (N.D. Cal.); Demaray LLC v. Samsung Electronics Co., No.
`6-20-cv-00636 (W.D. Tex.); and Demaray LLC v. Intel Corporation, No. 6-
`20-cv-00634 (W.D. Tex.) as related matters. Pet. 6; Paper 6, 2. Each of
`these proceedings involves the ’276 patent. Id.
`B. Real Parties-In-Interest
`Petitioner identifies Intel Corporation, Samsung Electronics Co., Ltd.,
`Samsung Electronics America, Inc., Samsung Semiconductor, Inc., Samsung
`Austin Semiconductor, LLC, and itself as real parties-in-interest. Pet. 6.
`Patent Owner identifies itself as a real party-in-interest. Paper 6, 2.
`C. The ’276 Patent
`The ’276 patent, titled “Biased Pulse DC Reactive Sputtering of
`Oxide Films,” relates to “deposition of oxide and oxynitride films and, in
`particular, to deposition of oxide and oxynitride films by pulsed DC reactive
`sputtering.” Ex. 1001, code (54), 1:12–14. The ’276 patent discloses that
`typically, radio frequency (“RF”) sputtering has been used for deposition of
`oxide dielectric films, but arcing can occur between sputtering target tiles
`used to make such films, which causes contamination of the deposited films.
`Id. at 2:25–30. The ’276 patent further states that reactors for RF sputtering,
`particularly their power systems, are complicated. Id. at 2:30–38. The ’276
`patent discloses that reactive DC magnetron sputtering of nonconductive
`
`3
`
`

`

`IPR2021-00105
`Patent 7,544,276 B2
`
`oxides “is done rarely” because insulating surfaces accumulate charge
`during deposition and result in arcing, which “can damage the power supply,
`produce particles and degrade the properties of deposited oxide films.” Id.
`at 4:44–52.
`Figure 1A of the ’276 patent is reproduced below.
`
`
`Figure 1A depicts a pulsed DC sputtering reactor. Id. at 3:26–27. The ’276
`patent describes reactor apparatus 10 for sputtering of material from
`target 12. Id. at 5:7–9. Magnet 20 is scanned across the top of target 12,
`which reduces local erosion of target 12 during sputtering. Id. at 5:28–29,
`8:47–55. Substrate 16 is opposite and parallel to target 12. Id. at 5:23–24.
`Substrate 16 is capacitively coupled to electrode 17 via insulator 54. Id.
`at 5:26–27. Electrode 17 can be coupled to RF power supply 18. Id.
`at 5:27–28. The ’276 patent explains that columnar structures in a deposited
`film can be detrimental for optical wave guide applications, but applying an
`RF bias on substrate 16 during deposition can substantially eliminate
`columnar structures. Id. at 5:60–67. The ’276 patent discloses that target 12
`
`4
`
`

`

`IPR2021-00105
`Patent 7,544,276 B2
`
`functions as a cathode when power is applied to it, which creates plasma 53.
`Id. at 5:24–26.
`Target 12 is electrically coupled through filter 15 to pulsed DC power
`supply 14. Id. at 5:19–20. The ’276 patent discloses that the polarity of the
`power supplied to target 12 by the pulsed DC power supply 14 oscillates
`between negative and positive potentials. Id. at 5:30–33. According to
`the ’276 patent, the insulating layer on the surface of target 12 discharges
`during the positive period, which prevents arcing. Id. at 5:33–35. The ’276
`patent discloses that the pulsing frequency must exceed a critical frequency,
`which depends on a target material, cathode current, and reverse time. Id.
`at 5:35–37.
`Reactor apparatus 10 further includes filter 15, which prevents RF
`power supply 18 from coupling into pulsed DC power supply 14. Id.
`at 5:50–51. According to the ’276 patent, filter 15 can be a 2 MHz band
`rejection filter when a 2 MHz power supply is used for RF power supply 18.
`Id. at 5:51–55. The ’276 patent discloses that “the band width of the
`filter 15 can be approximately 100 kHz.” Id. at 5:55–57.
`D. Illustrative Claim
`Claims 1 and 6 of the ’276 patent are independent. Claim 1 is
`representative and is reproduced below:
`1. A reactor according to the present invention, comprising:
`a target area for receiving a target;
`a substrate area opposite the target area for receiving a
`substrate;
`a pulsed DC power supply coupled to the target area, the
`pulsed DC power supply providing alternating negative and
`positive voltages to the target;
`an RF bias power supply coupled to the substrate; and
`
`5
`
`

`

`IPR2021-00105
`Patent 7,544,276 B2
`
`
`a narrow band-rejection filter that rejects at a frequency of
`the RE1 bias power supply coupled between the pulsed DC
`power supply and the target area.
`Ex. 1001, 22:40–50.
`E. The Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–13 of the ’276 patent are
`unpatentable on the following grounds. Pet. 13.
`Reference(s)
`Basis
`Licata,2 Kelly,3 Collins4
`§ 103
`
`Claim(s) Challenged
`1–3, 6–8
`
`Licata, Kelly, Collins, Aokura5
`
`Licata, Kelly, Collins, Dogheche6
`
`Licata, Kelly, Collins, Doessel7
`
`§ 103
`
`§ 103
`
`§ 103
`
`4, 5
`
`9, 10
`
`11–13
`
`In support of its unpatentability arguments, Petitioner relies on the
`declaration of Dr. Vivek Subramanian. Ex. 1002 (“Subramanian
`Declaration”). Patent Owner relies on the declaration of Dr. Alexander
`Glew. Ex. 2002 (“Glew Declaration”).
`
`
`1 This appears to be a typographical error that should read “RF” instead of
`“RE.”
`2 US 6,132,564 A, issued Oct. 17, 2000 (Ex. 1010).
`3 P. J. Kelly et al., Reactive pulsed magnetron sputtering process for
`alumina films, J. of Vacuum Sci. & Tech., A 18, 2890 (2000) (Ex. 1059).
`4 US 6,077,384 A, issued June 20, 2000 (Ex. 1071).
`5 JP H10102247 A, published Apr. 21, 1998 (Ex. 1068) ((English translation
`(pp. 1–12); Verified Statement of Translation (p. 12); Japanese language
`document (pp. 14–24).
`6 E. Dogheche, Growth and optical characterization of aluminum nitride
`thin films deposited on silicon by radio-frequency sputtering, Appl. Phys.
`Lett. 74, 1209 (1999) (Ex. 1029).
`7 US 5,527,605 A, issued June 18, 1996 (Ex. 1070).
`
`6
`
`

`

`IPR2021-00105
`Patent 7,544,276 B2
`
`
`II. ANALYSIS
`A. Discretion under 35 U.S.C. § 314(a) - Multiple Petitions
`When evaluating whether to institute trial on more than one
`concurrently-filed petition addressing the same patent, we are guided by our
`Consolidated Trial Practice Guide, which states:
`Based on the Board’s prior experience, one petition should be
`sufficient to challenge the claims of a patent in most situations.
`Two or more petitions filed against the same patent at or about
`the same time . . . may place a substantial and unnecessary burden
`on the Board and the patent owner and could raise fairness,
`timing, and efficiency concerns. See U.S.C. § 316(b). . . .
`Nonetheless,
`the Board
`recognizes
`that
`there may be
`circumstances in which more than one petition may be necessary,
`including, for example, when the patent owner has asserted a
`large number of claims in litigation or when there is a dispute
`about priority date requiring arguments under multiple prior art
`references. In such cases two petitions by a petitioner may be
`needed, although this should be rare.
`CTPG 59.
`Here, Petitioner filed two petitions on the same day, both challenging
`claims 1–13 of the ’276 patent. In the present petition, Petitioner challenges
`claims 1–13 on grounds based on Licata, Kelly, and Collins in combination
`with a number of other references. Notice 1; Pet. 13. In the petition in
`IPR2021-00103, Petitioner challenges claims 1–13 of the ’276 patent on
`grounds based on Barber and Hirose in combination with other references.
`IPR2021-00103, Paper 1, 3–5.
`Petitioner argues that the Board should institute both petitions because
`Patent Owner has asserted claims of the ’276 patent against real parties-in-
`interest Intel and Samsung in separate district court litigations. Notice 1–2.
`Petitioner asserts that by coordinating efforts with its real parties-in-interest,
`
`7
`
`

`

`IPR2021-00105
`Patent 7,544,276 B2
`
`including Intel and Samsung, and presenting only two petitions challenging
`the ’276 patent, this “minimiz[es] issues arising from these multiple parties
`for the Board, despite the wealth of prior art against the ’276 patent’s broad
`claims.” Id. at 2–3. Petitioner also argues that there are material differences
`between the petitions that warrant institution of both petitions, and that the
`Board has routinely instituted two parallel petitions under similar
`circumstances. Id. at 3–5.
`We are not persuaded that Petitioner’s arguments justify a second
`petition challenging claims 1–13 of the ’276 patent.
`First, we disagree with Petitioner’s argument that its coordinated
`efforts with Samsung and Intel to present two petitions against the ’276
`patent result in “minimizing issues from these multiple parties for the
`Board.” Notice 2–3. Significantly, neither Samsung nor Intel are petitioners
`in the present proceeding, and neither Samsung nor Intel have made any
`representation that they will not file a petition challenging claims of the ’276
`patent. At most, Petitioner asserts that “as of their filing, [the two petitions
`filed by Petitioner] are the only challenges to the ’276 patent before the
`Office.” Id. at 4. We decline to infer from Petitioner’s representations
`whether Samsung or Intel will file, or will not file, other petitions
`challenging the ’276 patent. As such, Petitioner has not shown that its
`efforts minimize potential issues from multiple parties for the Board. We
`further note that if another party chooses to file a petition challenging claims
`of the ’276 patent, we would determine at that time whether to institute any
`such petition. See Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-
`00062, 00063, -00084, Paper 11, 2 (PTAB Apr. 2, 2019) (precedential)
`(stating that “when different petitioners challenge the same patent, we
`
`8
`
`

`

`IPR2021-00105
`Patent 7,544,276 B2
`
`consider any relationship between those petitioners when weighing the
`General Plastic factors”); see also CTPG 56–58 (stating that the Board will
`consider the General Plastic factors when determining whether to institute a
`trial).
`
`Second, we are not persuaded that material differences exist between
`the claim analyses presented in this Petition and the petition filed in
`IPR2021-00103. Petitioner argues that the IPR2021-00103 petition relies on
`references not of record during prosecution, whereas the present Petition
`relies on Kelly, which was of record during prosecution, although not
`applied by the Examiner. Notice 3. Petitioner does not sufficiently explain
`why Petitioner’s assertion of art (i.e., Kelly) that was before the Examiner in
`its second-ranked petition is material or justifies the institution of a second
`petition. See CTPG 60 (stating Petitioner should 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 institute additional petitions if it identifies one
`petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a)”). For
`example, Petitioner does not explain why, if the Board institutes the first-
`ranked petition that asserts art that was not before the Examiner, the Board
`should also institute a second petition that relies on art that was before the
`Examiner. Therefore, Petitioner’s arguments are not persuasive.
`We also disagree with Petitioner’s contention that the petitions present
`different approaches to the claim limitations. Notice 3–4. Petitioner asserts
`that the IPR2021-00103 petition presents grounds based on Barber, which
`does not expressly disclose the filter claimed by the ’276 patent, whereas the
`grounds of this proceeding include Licata, which describes “an RF filter
`
`9
`
`

`

`IPR2021-00105
`Patent 7,544,276 B2
`
`between an RF power source and a pulse DC power source but does not
`expressly disclose the bipolar aspects of the DC power source.” Id. at 3.
`Petitioner also asserts that the IPR2021-00103 petition also relies on Hirose
`to disclose the claimed filter, whereas this proceeding relies on Collins. Id.
`In addition, Petitioner argues that “due to the nature of the challenged
`claims, and the relevant prior art available, Petitioner had to separate the
`grounds into separate petitions in order to ensure the different grounds
`contained the necessary specificity.” Id. at 4.
`Patent Owner responds that the two petitions use one or two base
`references (i.e., Barber, or Barber and Belkind, in the IPR2021-00103
`petition, and Licata and Kelly in this proceeding) for the claimed reactor and
`either Hirose or Collins for the claimed filter. Notice Response 2–4. Patent
`Owner argues that the Petitions start with the same base reactor system
`without a filter, and then make the same design-choice argument that it
`would have been obvious to add the claimed filter. Id. at 5.
`Patent Owner’s arguments illustrate that there are more similarities
`than material differences between the challenges set forth in the petitions.
`Petitioner’s arguments highlight these similarities by stating that “Petition 1
`relies on Hirose to disclose the claimed filter aspects, whereas Petition 2
`relies on Collins.” Notice 3. Although the references relied on by the
`petitions to disclose the claimed reactor system differ, the petitions present
`similar scenarios in which base references are relied on for the reactor and
`another reference is relied on to disclose the claimed filter. As such, we
`disagree that Petitioner’s reliance on different art in each proceeding is a
`reason to institute multiple proceedings.
`
`10
`
`

`

`IPR2021-00105
`Patent 7,544,276 B2
`
`
`Petitioner has identified no special circumstances, such as the
`examples provided in the Consolidated Trial Practice Guide, that would
`justify a second inter partes review of the same patent. The ’276 patent
`contains a relatively small number of claims (13 claims) (Ex. 1001, 22:40–
`24:13), the claims themselves are not particularly long, and evaluating the
`claims does not require analysis of a large number of limitations. Nor is
`there an alternative potential claim construction that requires Petitioner to set
`forth an alternative set of grounds, nor does there appear to be any dispute,
`at this time, as to the priority date of the ’276 patent. See generally Pet.;
`Prelim. Resp.
`Finally, we disagree with Petitioner that the Board has routinely
`instituted two parallel petitions under similar circumstances. Notice 4.
`None of the proceedings identified by Petitioner present similar
`circumstances to those presented here. The petitions before us do not
`involve, for example, a possible antedating issue for a reference cited in the
`challenges, as in IPR2019-00290 to -002938 or IPR2019-00237 to -00239.9
`The petitions before us also do not involve, for example, challenges under
`35 U.S.C. § 112 in the first petition and prior art challenges in the other
`petitions, as in PGR2019-00037, PGR2019-00040, and PGR2019-00042.
`We have determined that there are no material differences between the
`analyses presented in the first and the second petitions, and that the first and
`second petitions do not address claim limitations in different ways that could
`cause different outcomes, distinguishing these cases from IPR2019-01223 to
`
`
`8 The petitions in IPR2019-00291 and IPR2019-00293 were denied under
`Section 314 as improper multiple petitions. IPR2019-00291, Paper 16, 8.
`9 The petition in IPR2019-00238 was denied under Section 314 as an
`improper multiple petition. IPR2019-00238, Paper 15, 8.
`
`11
`
`

`

`IPR2021-00105
`Patent 7,544,276 B2
`
`-01227 and IPR2019-01464 and IPR2019-01465. Finally, IPR2019-00165
`and IPR2019-00171 did not involve multiple petitions against the same
`patent and inter partes review was instituted in only one of those
`proceedings.
`In view of the above, Petitioner has not adequately explained why the
`Petition in this proceeding contains sufficient material differences in its
`analysis to support instituting an additional inter partes review of the
`challenged claims. We acknowledge Petitioner’s novel arguments,
`including its “collaboration” argument and its “wealth of prior art”
`argument, but are not persuaded that these are sufficient reasons to justify
`instituting inter partes review on two parallel petitions, nor are we directed
`to any persuasive authority indicating that the Board has adopted a practice
`of doing so. Accordingly, because we institute an inter partes review of
`claims 1–13 of the ’276 patent on the grounds presented in the IPR2021-
`00103 petition, we exercise our discretion under § 314(a) to deny institution
`in this proceeding.
`
`III. CONCLUSION
`For the reasons set forth above, we determine that the circumstances
`weigh in favor of discretionary denial of this Petition. Accordingly, we
`exercise our discretion to deny institution under 35 U.S.C. § 314(a).
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied and no trial is instituted.
`
`
`
`
`12
`
`

`

`IPR2021-00105
`Patent 7,544,276 B2
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLIED MATERIALS, INC.,
`Petitioner,
`v.
`DEMARAY LLC,
`Patent Owner.
`
`IPR2021-00105
`Patent 7,544,276 B2
`
`Before CHRISTOPHER L. CRUMBLEY, KRISTINA M. KALAN, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`CRUMBLEY, Administrative Patent Judge, concurring in the result.
`
`
`
`I concur in result only.
`
`
`
`
`
`
`
`
`
`
`
`13
`
`

`

`IPR2021-00105
`Patent 7,544,276 B2
`
`FOR PETITIONER:
`
`Naveen Modi
`Joseph E. Palys
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`PH-Applied_Materials-DemarayIPR@paulhastings.com
`
`
`
`FOR PATENT OWNER:
`
`H. Annita Zhong
`Benjamin Hattenbach
`C. Maclain Wells
`IRELL & MANELLA LLP
`hzhong@irell.com
`bhattenbach@irell.com
`mwells@irell.com
`DemarayIPRs@irell.com
`
`14
`
`

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