IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`DEMARAY LLC,
`
`Plaintiff,
`
`v.
`
`INTEL CORPORATION
`
`Defendant.
`
`DEMARAY LLC,
`
`Plaintiff,
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`SAMSUNG SEMICONDUCTOR, INC., and
`SAMSUNG AUSTIN SEMICONDUCTOR, LLC
`
`Defendants.
`
`Case No. 6:20-CV-00634-ADA
`
`JURY TRIAL DEMANDED
`
`Case No. 6:20-CV-00636-ADA
`
`JURY TRIAL DEMANDED
`
`DEFENDANTS’ FIRST AMENDED PRELIMINARY INVALIDITY CONTENTIONS
`
`Defendants Intel Corporation (“Intel”), Samsung Electronics Co., Ltd., Samsung
`
`Electronics America, Inc., Samsung Semiconductor, Inc., and Samsung Austin Semiconductor,
`
`LLC (collectively, “Samsung”) (together, “Defendants”), by their attorneys, make these First
`
`Amended Preliminary Invalidity Contentions concerning U.S. Patent Nos. 7,544,276 (“the ’276
`
`patent”) and 7,381,657 (“the ’657 patent”) (collectively, the “Asserted Patents”) to Demaray LLC
`
`(“Plaintiff” or “Demaray”) in connection with the above-referenced action, pursuant to the parties’
`
`proposed Scheduling Order (Intel Case Dkt. 30), and the Court’s Scheduling Order (Samsung Case
`
`Demaray Ex. 2003-p. 1
`Applied Materials v Demaray
`IPR2021-00106
`
`

`

`Dkt. 33) and the Court’s Updated Order Governing Proceedings – Patent Case (Intel Case Dkt. 37,
`
`Samsung Case Dkt. 41). The citation of prior art herein and the accompanying exhibits are not
`
`intended to reflect Defendants’ claim construction contentions, which will be disclosed in due
`
`course in accordance with the Scheduling Order, and may instead reflect Plaintiff’s apparent (and
`
`potentially erroneous) claim constructions based on its Infringement Contentions.
`
`Defendants’ First Amended Preliminary Invalidity Contentions herein replaces
`
`Defendants’ Preliminary Invalidity Contentions, which were served on December 11, 2020.
`
`Specifically, this cover pleading replaces Defendants’ Preliminary Invalidity Contentions cover
`
`pleading, which was served on December 11, 2020. The Exhibits referenced herein correspond to
`
`the Exhibits previously served on December 11, 2020. For avoidance of doubt, Defendants’ prior
`
`invalidity contentions with respect to 35 U.S.C. § 112 are withdrawn in view of Defendants’
`
`present understanding of Plaintiff’s infringement contentions and the parties’ respective claim
`
`construction positions.
`
`Defendants’ First Amended Preliminary Invalidity Contentions herein reflect Defendants’
`
`knowledge as of this early date in the present action. Defendants reserve the right, to the extent
`
`permitted by the Court and the applicable statutes and rules, including but not limited to the Court’s
`
`Order Governing Proceedings – Patent Case, to modify and/or supplement the Preliminary
`
`Invalidity Contentions in response to becoming aware of additional prior art or information
`
`regarding prior art, any modification or supplementation of Plaintiff’s Infringement Contentions,
`
`any claim construction by the Court, or as otherwise may be appropriate.
`
`The Scheduling Order and the Order Governing Proceedings – Patent Case contemplate
`
`that these Preliminary Invalidity Contentions would be prepared and served in response to
`
`Plaintiff’s Infringement Contentions. However, Plaintiff’s Infringement Contentions served
`
`Demaray Ex. 2003-p. 2
`Applied Materials v Demaray
`IPR2021-00106
`
`

`

`October 9, 2020 are insufficient because they lack proper and complete disclosure as to how
`
`Plaintiff contends that Defendants infringe the Asserted Claims. For example, in its Preliminary
`
`Infringement Contentions served October 9, 2020, Plaintiff only purports to cite evidence in its
`
`infringement contentions in support of infringement allegations on claims 1-3 and 6-8 of the ’276
`
`patent, and claim 1 of the ’657 patent. For other claims of the Asserted Patents, Plaintiff simply
`
`alleges that “[d]iscovery … is currently believed to be required to determine whether [Defendants]
`
`practice[] this claims.” Therefore, Defendants address claims 1-3 and 6-8 of the ’276 patent and
`
`claim 1 of the ’657 patent in these preliminary invalidity contentions in light of the lack of notice
`
`regarding these “other claims.” Defendants reserve the right to amend the Preliminary Invalidity
`
`Contentions in response to any permissible supplementation or amendment of Plaintiff’s
`
`Infringement Contentions. Due to Plaintiff’s failure to provide proper and complete disclosure of
`
`its Infringement Contentions, under the Order Governing Proceedings – Patent Case, Defendants
`
`reserve the right to seek leave from the Court to amend these Invalidity Contentions should
`
`Plaintiff be allowed by the Court to amend its Infringement Contentions or its apparent claim
`
`constructions. Defendants also reserve the right to amend these Invalidity Contentions in light of
`
`positions that Plaintiff or its expert witnesses may assert concerning claim construction,
`
`infringement, and/or invalidity issues.
`
`Plaintiff served Supplemental Preliminary Infringement Contentions on February 5, 2021.
`
`Defendants are in the process of reviewing these Supplemental Contentions, and reserve the right
`
`to further amend or supplement Defendants’ Preliminary Invalidity Contentions in response to
`
`Plaintiff’s Supplemental Contentions and/or any further supplementation, including in response to
`
`additional claims asserted in the February 5, 2021 Supplemental Preliminary Infringement
`
`Contentions.
`
`Demaray Ex. 2003-p. 3
`Applied Materials v Demaray
`IPR2021-00106
`
`

`

`Defendants’ Exhibits attached hereto cite to particular teachings and disclosures of the
`
`prior art as applied to features of the asserted claims. However, persons having ordinary skill in
`
`the art generally may view an item of prior art in the context of other publications, literature,
`
`products, and understanding. As such, the cited portions of prior art identified herein are
`
`exemplary only. Defendants may rely on the entirety of the prior art references listed herein,
`
`including un-cited portions of those prior art references, and on other publications and expert
`
`testimony shedding light on those prior art references, including as aids in understanding and
`
`interpreting the cited portions, as providing context thereto and as additional evidence that the
`
`prior art discloses a claim limitation.
`
`Defendants will also rely on documents, products, testimony, and other evidence to
`
`establish bases for and motivations to make combinations of certain cited references that render
`
`the asserted claims obvious. Defendants may rely upon corroborating documents, products,
`
`testimony, and other evidence including materials obtained through further investigation and third-
`
`party discovery of the prior art identified herein, that describes the invalidating features identified
`
`in these contentions; evidence of the state of the art in the relevant time period (irrespective of
`
`whether such references themselves qualify as prior art to the Asserted Patents), including prior
`
`art listed on the face of the Asserted Patents and/or disclosed in the specification (“Admitted Prior
`
`Art”); and/or expert testimony to provide context to or aid in understanding the cited portions of
`
`the identified prior art.
`
`The references discussed in the Exhibits herein disclose the elements of the asserted claims
`
`explicitly or inherently, and/or they may be relied upon to show the state of the art in the relevant
`
`time frame. To the extent the attached claim charts cite to a reference for each element or limitation
`
`of an asserted claim, Defendants contend that such reference anticipates that claim and/or renders
`
`Demaray Ex. 2003-p. 4
`Applied Materials v Demaray
`IPR2021-00106
`
`

`

`that claim obvious in view of the state of the art and/or knowledge of a person of ordinary skill in
`
`the art. In addition, to the extent that the attached claim charts cite to additional references,
`
`Defendants contend, in addition and/or in the alternative, that the asserted claim is rendered
`
`obvious for the reasons set forth in the attached charts. To the extent suggested obviousness
`
`combinations are included in the attached claim charts, they are provided in addition to and/or in
`
`the alternative to Defendants’ anticipation contentions and are not to be construed to suggest that
`
`any reference included in the combinations is not by itself anticipatory.
`
`For purposes of these Preliminary Invalidity Contentions, Defendants identify prior art
`
`references and provide element-by-element claim charts based, in part, on the apparent claim
`
`constructions advanced by Plaintiff in its Infringement Contentions. Nothing stated herein shall
`
`be treated as an admission or suggestion that Defendants agree with Plaintiff regarding either the
`
`scope of any of the asserted claims or the claim constructions advanced in the Infringement
`
`Contentions. Moreover, nothing in these Preliminary Invalidity Contentions shall be treated as an
`
`admission that any Defendants’ accused technology meets any limitations of the claims.
`
`Pursuant to the Order Governing Proceedings – Patent Case, Defendants have provided
`
`disclosures and related documents pertaining only to the asserted claims as identified by Plaintiff
`
`in its Infringement Contentions. See production volumes AMAT-DEM-PA_001 and DEFTS-
`
`PA_001. Defendants will further supplement their document production should they later find
`
`additional, responsive documents, such as, for example, documents produced by third-parties.
`
`Much of the art identified in the attached Exhibits reflects common knowledge and the state of the
`
`art prior to the filing date of the Asserted Patents.
`
`Demaray Ex. 2003-p. 5
`Applied Materials v Demaray
`IPR2021-00106
`
`

`

`Each of the asserted claims1 of the Asserted Patents is anticipated by and/or obvious in
`
`view of one or more items of prior art identified herein, alone or in combination. The identification
`
`of obviousness combinations is not intended to be exhaustive, as there are many possible
`
`combinations of the references that one of ordinary skill in the art would have been motivated to
`
`make.
`
`I.
`
`Priority
`
`In its Infringement Contentions, Plaintiff contends that the asserted claims of the
`
`Asserted Patents are “at a minimum … entitled to a priority date of at least as early March 16,
`
`2002, which is the filing date of U.S. Utility App. No. 10/101,863.”
`
`Plaintiff asserts that “the inventions of the Asserted Claims are currently believed to have
`
`been conceived at some point between June 13 and June 26 of 2001 and reduced to practice at
`
`least as early, and possibly earlier than July 6, 2001.”
`
`It is Plaintiff’s burden to show it is entitled to a given priority date, and Defendants assert
`
`that Demaray has failed to meet that burden. The documents produced by Plaintiff in support of
`
`its alleged conception and reduction to practice dates do not show that the named inventors of the
`
`Asserted Patents conceived of the asserted claims at some point between June 13, 2001 and June
`
`26, 2001; do not show that the named inventors of the Asserted Patents were diligent in reducing
`
`to practice their alleged inventions; and do not show that the alleged inventions were actually
`
`reduced to practice at least as early as July 6, 2001. For purposes of these Preliminary Invalidity
`
`Contentions, Defendants identify art that qualifies as prior art under 35 U.S.C. §102 (pre-AIA)
`
`on or before March 16, 2002, the filing date of the earliest allegedly related divisional or
`
`continuation application to the Asserted Patents.
`
`1
`For reasons analogous to those identified herein, Defendants contend all non-asserted
`claims of the Asserted Patents are invalid as anticipated and/or obvious in view of the prior art.
`
`Demaray Ex. 2003-p. 6
`Applied Materials v Demaray
`IPR2021-00106
`
`

`

`II.
`
`State of the Art
`
`The references discussed in the Exhibits herein may be relied upon to show the state of
`
`the art in the relevant time frame. This prior art identification is only exemplary and is not in any
`
`way intended to limit the scope of what one of ordinary skill in the art would have understood at
`
`the relevant time period of the alleged inventions or the breadth of the state of the art to which
`
`the alleged inventions of the Asserted Patents relate. Defendants reserve the right to rely upon
`
`additional prior art, information, testimony, and/or knowledge to demonstrate what one of
`
`ordinary skill in the art would have understood prior to the date of the alleged invention of the
`
`asserted claims of the Asserted Patents.
`
`III.
`
`Identification of Prior Art
`
`Defendants intend to rely upon the prior art identified below, and any additional prior art
`
`identified in the prosecution history of the Asserted Patents (including those identified in the
`
`prosecution history of their patent family and/or related patents), subject to the stipulation provided
`
`below in Section V. Stipulation Regarding Currently Pending Inter Partes Reviews (“IPRs”) of
`
`Asserted Patents.
`
`In these Preliminary Invalidity Contentions, including in the attached Exhibits, Defendants
`
`provide the full identity of each item of prior art, including: (1) each patent by its patent number,
`
`country of origin, and date of issue; (2) each non-patent publication by its title, date of publication,
`
`and, where feasible, author and publisher; (3) 35 U.S.C. § 102(b) prior art by the item offered for
`
`sale or publicly used or known, the date the offer or use took place or the information became
`
`known, and the identity of the person or entity which made the use or which made and received
`
`the offer, or the person or entity which made the information known or to whom it was made
`
`known; (4) 35 U.S.C. § 102(f) prior art by the name of the person(s) from whom and the
`
`circumstances under which the invention or any part of it was derived; and (5) 35 U.S.C. § 102(g)
`
`Demaray Ex. 2003-p. 7
`Applied Materials v Demaray
`IPR2021-00106
`
`

`

`prior art by the identities of the person(s) or entities involved in and the circumstances surrounding
`
`the making of the invention before the patent applicant(s), based on currently available
`
`information.
`
`Defendants’ identification of patents and publications as prior art herein and in the attached
`
`claim charts under 35 U.S.C. §§ 102(a), (b), (e), and/or (g) and § 103 includes the publications
`
`themselves as well as the use of the products, devices, and systems described therein. Although
`
`Defendants’ investigation continues, information available to date indicates that such products,
`
`devices, and systems were known or used in the country before the alleged invention of the claimed
`
`subject matter of the asserted claims, and/or were invented by another who did not abandon,
`
`suppress, or conceal, before the alleged invention of the claimed subject matter of the asserted
`
`claim. Upon information and belief, these prior art products, devices, and systems and their
`
`associated references anticipate and/or render obvious each of the asserted claims. Defendants
`
`further intend to rely on inventor admissions concerning the scope of the prior art relevant to the
`
`Asserted Patents found in, inter alia, the prosecution history for the Asserted Patents and any
`
`related patents, patent applications, and/or re-examinations; any deposition testimony of the named
`
`inventors on the Asserted Patents; and the papers filed and any evidence submitted by Plaintiff in
`
`conjunction with this litigation.
`
`Defendants reserve the right to rely upon additional evidence of invalidity obtained in the
`
`future, including, for example, from third parties.2 In addition, Defendants reserve the right to
`
`assert invalidity under 35 U.S.C. § 102(c) or (d) to the extent that further investigation and
`
`discovery yield information forming the basis for such claims.
`
`2 Pursuant to the Proposed Joint Scheduling Order (Samsung Case Dkt. 47), Fact Discovery
`opens April 7, 2021.
`
`Demaray Ex. 2003-p. 8
`Applied Materials v Demaray
`IPR2021-00106
`
`

`

`Demaray Ex. 2003-p. 9
`Applied Materials v Demaray
`IPR2021-00106
`
`

`

`Demaray Ex. 2003-p. 10
`Applied Materials v Demaray
`IPR2021-00106
`
`

`

`Demaray Ex. 2003-p. 11
`Applied Materials v Demaray
`IPR2021-00106
`
`

`

`Demaray Ex. 2003-p. 12
`Applied Materials v Demaray
`IPR2021-00106
`
`

`

`Demaray Ex. 2003-p. 13
`Applied Materials v Demaray
`IPR2021-00106
`
`

`

`Demaray Ex. 2003-p. 14
`Applied Materials v Demaray
`IPR2021-00106
`
`

`

`Demaray Ex. 2003-p. 15
`Applied Materials v Demaray
`IPR2021-00106
`
`

`

`narrow band rejection filter for Symmorphix. On information and belief, to the extent that the
`
`Asserted Patents are valid or patentable (they are not), Weisse conceived and developed the narrow
`
`band rejection filter disclosed in the ’863 Application and recited in the claims of the Asserted
`
`Patents. Weisse, therefore, is a proper inventor of the alleged invention and should have been
`
`named as an inventor but was not. The claims of the Asserted Patents are, thus, invalid under pre-
`
`AIA 35 U.S.C. § 102(f) for failure to name all proper inventors.
`
`
`
`Fact Discovery has not begun, and Defendants’ prior art investigation, including via
`
`discovery and third-party discovery, is therefore not yet complete. Plaintiff may also have in its
`
`possession, custody, or control information related to or pertaining to prior art under 35 U.S.C. §
`
`102(f) but has yet to produce that information in discovery. Defendants will supplement these
`
`Invalidity Contentions if and when Plaintiff produces the information and Defendants have had
`
`the opportunity to obtain and analyze that information.
`
`
`
`Additional Prior Art under 35 U.S.C. § 102(e) and 35 U.S.C. § 102(g)
`
`
`
`At present, Plaintiff has neither adequately alleged nor provided sufficient evidence of a
`
`conception date for the Asserted Patents earlier than the claimed priority dates on the faces of the
`
`Asserted Patents. Should the Court permit Plaintiff to provide evidence of an earlier conception
`
`date, Defendants reserve the right to assert that any of the § 102(a) prior art is § 102(e) and/or
`
`§ 102(g) prior art.
`
`Defendants contend that each of the disclosures in Sections III.A (list of prior art patents),
`
`III.B (list of prior art publications), and III.C (list of prior art systems) constitute prior inventions
`
`to the asserted claims as detailed above.
`
`Defendants intend to rely upon these disclosures in Sections III.A (list of prior art patents),
`
`III.B (list of prior art publications), and III.C (list of prior art systems), subject to the stipulation
`
`Demaray Ex. 2003-p. 16
`Applied Materials v Demaray
`IPR2021-00106
`
`

`

`provided below in Section V. Stipulation Regarding Currently Pending Inter Partes Reviews
`
`(“IPRs”) of Asserted Patents.
`
`IV.
`
`Invalidity under 35 U.S.C. §§ 102 and 103
`
`In addition to and including the prior art disclosed in the Exhibits incorporated by reference
`
`herein, each of the asserted claims of the Asserted Patents is anticipated by and/or obvious in view
`
`of one or more of items of prior art identified above in Sections III.A. (list of prior art patents),
`
`III.B. (list of prior art publications), III.C. (list of prior art offered for sale or publicly used or
`
`known), and/or III.E. (list of prior invention prior art), alone or in combination. Generally, it would
`
`have been obvious to one of ordinary skill in the art to combine any of these references to arrive
`
`at the claimed invention. The combination of familiar elements according to known methods is
`
`obvious here because it yielded predictable results. Motivation to combine any two or more of the
`
`identified references comes from the fact that all of the references relate to the fields of
`
`semiconductor manufacturing and/or associated applications in the fields of electronics and/or
`
`optics, and one would be motivated by various benefits, including, for example, considerations of
`
`efficiency, effectiveness, convenience, cost-savings, and accessibility, to combine the various
`
`teachings.
`
`The asserted claims of the Asserted Patents are directed to obvious combinations of old
`
`and familiar steps or elements, each performing the same function it has long been known to
`
`perform, which yield nothing more than predictable results. Put another way, the claimed subject
`
`matter is obvious because it is nothing more than (i) combinations of prior art elements according
`
`to known methods to yield predictable results, (ii) simple substitutions of one known element for
`
`another to yield predictable results, (iii) applications of known techniques to known devices ready
`
`for improvement to yield predictable results, and/or (iv) obvious to try. One of skill in the art
`
`would have been motivated to either modify the prior art identified in the Preliminary Invalidity
`
`Demaray Ex. 2003-p. 17
`Applied Materials v Demaray
`IPR2021-00106
`
`

`

`Exhibits or to combine that prior art in the manner indicated, by, for example, their background
`
`knowledge, design incentives, effects of demands known to the design community, or other market
`
`forces, in particular the desire and need for more effective sputtering reactors and methods.
`
`Further, the prior art discussed in this section all relate to the fields of semiconductor
`
`manufacturing and/or associated applications in the fields of electronics and/or optics. This would
`
`have further motivated one of skill in the art to combine those references. In view of the simplicity
`
`of the claimed subject matter and its use of well-known components with recognized benefits, the
`
`common sense of those skilled in the art also would have served as a motivation to combine any
`
`of the identified references and demonstrates that the asserted claims of the Asserted Patents would
`
`be obvious.
`
`Defendants have attached Exhibits containing claim charts identifying examples of prior
`
`art that anticipates and/or renders obvious each asserted claim of the Asserted Patents.
`
`Specifically, to the extent the attached claim charts cite to a reference for each element or limitation
`
`of an asserted claim, Defendants contend that such reference anticipates that claim and/or renders
`
`that claim obvious in view of the state of the art and/or knowledge of a person of ordinary skill in
`
`the art. In addition, to the extent that the attached claim charts cite to additional references,
`
`Defendants contend, in addition and/or in the alternative, that the asserted claim is rendered
`
`obvious for the reasons set forth in the attached charts. To the extent suggested obviousness
`
`combinations are included in the attached claim charts, they are provided in addition and/or in the
`
`alternative to Defendants’ anticipation contentions and are not to be construed to suggest that any
`
`reference included in the combinations is not by itself anticipatory.
`
`Again, for the avoidance of doubt, Defendants intend to rely upon the prior art identified
`
`above and below, any art cited or referenced in the attached Exhibits, and any additional prior art
`
`Demaray Ex. 2003-p. 18
`Applied Materials v Demaray
`IPR2021-00106
`
`

`

`Demaray Ex. 2003-p. 19
`Applied Materials v Demaray
`IPR2021-00106
`
`

`

`To the extent not identified above in Section III, Defendants identify all references listed
`
`in the Invalidity Charts table as prior art references anticipating and/or rendering obvious one or
`
`more claims of the Asserted Patents.
`
`To the extent that Plaintiff contends that any one of the primary references does not disclose
`
`one or more elements of the Asserted Claims, it would have been obvious to combine the primary
`
`references in the Invalidity Charts with one or more of the references in one or more of the below
`
`exhibits, collectively the “Obviousness Exhibits,” as discussed more fully in each of the Invalidity
`
`Charts and Obviousness Exhibits.
`
`All of the asserted claims of the Asserted Patents are anticipated, expressly or inherently,
`
`and therefore fail to meet one or more of the requirements for patentability, as detailed in the
`
`Invalidity Charts. Additionally, and in the alternative, the asserted claims of the Asserted Patents
`
`are obvious in view of the state of the prior art (including Admitted Prior Art) alone and/or in
`
`combination with the references described in the above-referenced Exhibits as well as the
`
`references and disclosures described in the Obviousness Exhibits below. The alleged “inventions”
`
`claimed in the asserted claims of the Asserted Patents would have been obvious because the prior
`
`art, common knowledge, and the nature of the problems, viewed through the eyes of a person
`
`ordinarily skilled in the art, suggested the claimed elements. A person of ordinary skill in the
`
`relevant fields would have possessed knowledge and skills rendering him or her capable of
`
`combining the prior art references with knowledge in the field and common sense. Moreover, the
`
`asserted claims represent well-known combinations of familiar and pre-existing elements, yielding
`
`only predictable results. Additional reasons that a person of ordinary skill in the art would have
`
`been motivated to combine the identified prior art are provided in the Exhibits attached hereto.
`
`Demaray Ex. 2003-p. 20
`Applied Materials v Demaray
`IPR2021-00106
`
`

`

`In addition to the specific combinations of prior art and the specific combinations of groups
`
`of prior art disclosed, Defendants will rely on any other combination of any prior art references
`
`disclosed herein. Defendants further will rely upon combinations disclosed within the prosecution
`
`history of the references cited herein. The obviousness combinations set forth in these contentions
`
`reflect Defendants’ present understanding of the potential scope of the claims that Plaintiff appears
`
`to be advocating and should not be seen as Defendants’ acquiescence to Plaintiff’s interpretation
`
`of the patent claims. Defendants reserve the right to amend or supplement these Preliminary
`
`Contentions regarding anticipation or obviousness of the asserted claims as appropriate under the
`
`applicable rules, including in response to further information from Plaintiff or information
`
`discovered during discovery. Plaintiff has not identified what elements or combinations it alleges
`
`were not known to one of ordinary skill in the art at the time. Therefore, for any claim limitation
`
`that Plaintiff alleges is not disclosed in a particular prior art reference, Defendants reserve the right
`
`to assert that any such limitation is either inherent in the disclosed reference or obvious to one of
`
`ordinary skill in the art at the time in light of the same, or that the limitation is disclosed in another
`
`of the references disclosed above and in combination would have rendered the asserted claim
`
`obvious.
`
`In an effort to focus the issues, Defendants have cited representative portions of identified
`
`references, even where a reference may contain additional support for a particular claim element.
`
`In addition, persons of ordinary skill in the art generally read a prior art reference as a whole and
`
`in the context of other publications and literature. Thus, to understand and interpret any specific
`
`statement or disclosure within a prior art reference, such persons would rely on other information
`
`within the reference, along with other publications and their general scientific knowledge. As
`
`Demaray Ex. 2003-p. 21
`Applied Materials v Demaray
`IPR2021-00106
`
`

`

`Demaray Ex. 2003-p. 22
`Applied Materials v Demaray
`IPR2021-00106
`
`

`

`Demaray Ex. 2003-p. 23
`Applied Materials v Demaray
`IPR2021-00106
`
`

`

`Demaray Ex. 2003-p. 24
`Applied Materials v Demaray
`IPR2021-00106
`
`

`

`Demaray Ex. 2003-p. 25
`Applied Materials v Demaray
`IPR2021-00106
`
`

`

`Asserted Patents indicate that “[p]ulsed DC power supply 14 can be any pulsed DC power supply,
`
`for example an AE Pinnacle plus 10K by Advanced Energy.” ’657 patent at 5:46-48; ’276 patent
`
`at 5:40-42. The Asserted Patents also indicate that the RF “power supply 18 is a 2 MHz RF power
`
`supply, for example can be a Nova-25 power supply made by ENI, Colorado Springs, Colo.”
`
`See ’657 patent at 5:58-60; ’276 patent at 5:52-54. Furthermore, during prosecution of the parent
`
`or divisional of the Asserted Patents, the applicant thereof admits that the pulsed DC power
`
`supplies were known to provide both positive and negative voltages to the target at the time of the
`
`alleged invention. See Pros. History of App. No. 10/101863 at 1305-1306 FN 2 (“Applicant has
`
`submitted three articles that explain various aspects of pulsed-dc technology in the Information
`
`Disclosure Statement that accompanies this amendment: See, e.g., Richard A. Scholl, ‘Power
`
`Systems for Reactive Sputtering of Insulating Films,’ Advanced Energy Industries, Inc., While
`
`Paper, September, 2001, page 3, paragraph 3; See also, Richard A. Scholl, ‘Advanced Supplies for
`
`Pulsed Plasma Technologies: State-Of-The-Art and Outlook,” Advanced Energy Industries, Inc.,
`
`White Paper, 1999; and A. Belkind, et al., ‘Pulsed-DC Reactive Sputtering of Dielectrics: Pulsing
`
`Parameter Effects,’ Society of Vacuum Coaters 43rd Annual Technical Conference Proceedings,
`
`Denver, CO, April 15-20, 2000.”).
`
`Additional obviousness combinations of the prior art references identified herein are
`
`possible, and Defendants reserve the right to use any such combination(s) in this litigation. In
`
`particular, Defendants are currently unaware of the extent, if any, to which Plaintiff will contend
`
`that limitations of the claims at issue are not disclosed in the art identified by Defendants as
`
`anticipatory. To the extent that an issue arises with any such limitation, Defendants reserve the
`
`right to identify other references that would have made obvious the additional allegedly missing
`
`limitation to the disclosed device or method of operation.
`
`Demaray Ex. 2003-p. 26
`Applied Materials v Demaray
`IPR2021-00106
`
`

`

`Again, for the avoidance of doubt, Defendants intend to rely upon the prior art identified
`
`above, any art cited or referenced in the attached Exhibits, any art referenced in the prior art
`
`themselves, and any additional prior art identified in the prosecution history of the Asserted Patents
`
`or their related patents, subject to the stipulation provided in Section V. Stipulation Regarding
`
`Currently Pending Inter Partes Reviews (“IPRs”) of Asserted Patents.
`
`V.
`
`Stipulation Regarding Currently Pending Inter Partes Reviews (“IPRs”) of Asserted
`Patents4
`
`Defendants understand that Applied Materials has filed petitions requesting inter partes
`
`review (“IPR”) of the claims of the Asserted Patents. See IPR2021-00103, -00104, -00105, -00106
`
`(collectively the “Applied Materials IPRs”). Defendants also understand that these IPR petitions
`
`are currently pending before the Patent Trial and Appeal Board (“PTAB”) of the United States
`
`Patent and Trademark Office.
`
`For the avoidance of doubt, the following specific invalidity grounds are being advanced
`
`in the Applied Materials IPRs.
`
`IPR2021-00103 asserts the following specific invalidity grounds:
`
`1. Barber in view of Hirose renders obvious claims 1-3 and 6-8 of the ’276 patent;
`2. Barber in view of Hirose and Aokura renders obvious claims 4 and 5 of the ’276
`patent;
`3. Barber in view of Hirose and Yamazaki renders obvious claim 9 of the ’276 patent;
`4. Barber in view of Hirose and Dogheche renders obvious claims 9 and 10 of the
`’276 patent;
`5. Barber in view of Hirose and Sproul renders obvious claims 11 and 12 of the ’276
`patent;
`6. Barber in view of Hirose and Laird renders obvious claims 11 and 13 of the ’276
`patent;
`7. Barber in view of Hirose and Segal renders obvious claims 11-13 of the ’276
`patent;
`
`4 This stipulation is made in light of current law as well as recent procedure of and decisions
`rendered before the PTAB and/or United States Patent and Trademark Office (“USPTO”).
`Defendants reserve the right to reassert in this litigation any specific invalidity ground, which is
`stipulated to not be pursued, in the event of changing law, or subsequent procedure, decisions, or
`guidance provided by the PTAB and/or USPTO.
`
`Demaray Ex. 2003-p. 27
`Applied Materials v Demaray
`IPR2021-00106
`
`

`

`8. Barber in view of Hirose and Belkind renders obvious claims 1-3 and 6-8 of the
`’276 patent;
`9. Barber in view of Hirose and Aokura and Belkind renders obvious claims 4 and 5
`of the ’276 patent;
`10. Barber in view of Hirose and Yamazaki and