`571-272-7822
`
`Paper 8
`Date: October 29, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`INTEL CORPORATION,
`Petitioner,
`v.
`DEMARAY LLC,
`Patent Owner.
`
`IPR2021-01030
`Patent 7,544,276 B2
`
`
`
`
`
`
`
`
`
`Before CHRISTOPHER L. CRUMBLEY, KRISTINA M. KALAN, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`KALAN, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`Granting Petitioner’s Unopposed Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`
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`IPR2021-01030
`Patent 7,544,276 B2
`
`INTRODUCTION
`I.
`Intel Corporation (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting an inter partes review of claims 1–13 of U.S. Patent
`No. 7,544,276 B2 (Ex. 1001, “the ’276 patent”). Petitioner also filed a
`Motion for Joinder (Paper 4, “Mot.”), seeking to join as a party to Applied
`Materials, Inc. v. Demaray LLC, IPR2021-00103 (the “Applied IPR”).
`Demaray LLC (“Patent Owner”) did not file a Preliminary Response to the
`Petition or an opposition to the Motion for Joinder.
`To institute an 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). If we determine that a party
`has filed a petition that warrants institution of an inter partes review, we
`may join that party to another instituted inter partes review. 35 U.S.C.
`§ 315(c). For the reasons discussed below, after considering the parties’
`submissions and the evidence of record, we determine that Petitioner has
`demonstrated a reasonable likelihood of prevailing with respect to at least
`one claim of the ’276 patent. Thus, we institute an inter partes review. We
`also join Petitioner as a party to the Applied IPR.
`At this preliminary stage of the proceeding, we have not made a final
`determination as to the patentability of any challenged claim or any factual
`or legal issue underlying the patentability inquiry. Any final determination
`will be based on the record developed during trial.
`A. Related Proceedings
`Petitioner identifies IPR2021-00103 as another proceeding involving
`the ’276 patent. Pet. 2. Petitioner also identifies Demaray LLC v. Samsung
`Electronics Co., Ltd., No. 6-20-cv-00636 (W.D. Tex.); Demaray LLC v.
`
`2
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`IPR2021-01030
`Patent 7,544,276 B2
`Intel Corporation, No. 6-20-cv-00634 (W.D. Tex.); and Applied Materials,
`Inc. v. Demaray LLC, No. 5-20-cv-09341 (N.D. Cal.) as related matters. Id.
`Each of these proceedings involves the ’276 patent. Id.
`B. Real Parties-In-Interest
`Petitioner identifies Intel Corporation, Applied Materials, Inc.
`(“Applied Materials”), Samsung Electronics Co., Ltd., Samsung Electronics
`America, Inc., Samsung Semiconductor, Inc., and Samsung Austin
`Semiconductor, LLC, as real parties-in-interest. Pet. 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
`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.
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`3
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`IPR2021-01030
`Patent 7,544,276 B2
`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
`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
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`4
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`IPR2021-01030
`Patent 7,544,276 B2
`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
`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.
`
`1 This appears to be a typographical error that should read “RF” instead of
`“RE.” A district court may “correct an error in a patent by interpretation of
`the patent where no certificate of correction has been issued . . . only if
`(1) the correction is not subject to reasonable debate based on consideration
`of the claim language and the specification and (2) the prosecution history
`
`5
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`IPR2021-01030
`Patent 7,544,276 B2
`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. 3–5.
`References
`Basis
`Barber,2 Hirose3
`§ 1034
`
`Claim(s) Challenged
`1–3, 6–8
`
`Barber, Hirose, Aokura5
`
`Barber, Hirose, Yamazaki6
`
`Barber, Hirose, Dogheche7
`
`§ 103
`
`§ 103
`
`§ 103
`
`4, 5
`
`9
`
`9, 10
`
`
`does not suggest a different interpretation of the claims.” Novo Indus., LP v.
`Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003); see also Fitbit,
`Inc. v. Valencell, Inc., 964 F.3d 1112, 1119–20 (Fed. Cir. 2020) (suggesting
`the standard from Novo extends to corrections the Board may make in post-
`grant proceedings, and holding it was error to not correct a “conspicuous”
`and undisputed error related to antecedent basis). We have applied this same
`standard in our proceedings. E.g., Apple Inc. v. Achates Reference Publ’g,
`Inc., IPR2013-00080, Paper 22 at 10–12 (PTAB June 3, 2013).
`2 US 6,342,134 B1, issued Jan. 29, 2002 (Ex. 1005).
`3 US 6,485,602 B2, issued Nov. 26, 2002 (Ex. 1006).
`4 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’276 patent has an
`effective filing date prior to the effective date of the applicable AIA
`amendments, we refer to the pre-AIA versions of § 103.
`5 JP H10102247 A, published Apr. 21, 1998 (Ex. 1068) (English translation
`(pp. 1–12); Verified Statement of Translation (p. 13); Japanese language
`document (pp. 14–24)).
`6 US 6,657,260 B2, issued Dec. 2, 2003 (Ex. 1046).
`7 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).
`
`6
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`IPR2021-01030
`Patent 7,544,276 B2
`References
`Barber, Hirose, Sproul8
`
`Barber, Hirose, Laird9
`
`Barber, Hirose, Segal10
`
`Barber, Hirose, Belkind11
`
`Barber, Hirose, Belkind, Aokura
`
`Barber, Hirose, Belkind, Yamazaki
`
`Barber, Hirose, Belkind, Dogheche
`
`Barber, Hirose, Belkind, Sproul
`
`Barber, Hirose, Belkind, Laird
`
`Barber, Hirose, Belkind, Segal
`
`Basis
`§ 103
`
`Claim(s) Challenged
`11, 12
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`11, 13
`
`11–13
`
`1–3, 6–8
`
`4, 5
`
`9
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`9, 10
`
`11, 12
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`11, 13
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`11–13
`
`In support of its unpatentability arguments, Petitioner relies on the
`declaration of Dr. Vivek Subramanian. Ex. 1002.
`II. ANALYSIS
`The Petition is substantively identical to the petition in the Applied
`IPR. See Mot. 1 (stating that the Petition and the petition in the Applied IPR
`are identical “in all substantive respects” and that they include “identical
`exhibits and rel[y] upon the same expert declarants”), 3 (stating that
`
`
`8 W. Sproul, High-rate reactive DC magnetron sputtering of oxide and
`nitride superlattice coatings, Elsevier Science Ltd. 51, 641 (1998)
`(Ex. 1036).
`9 US 2001/0041252 A1, published Nov. 15, 2001 (Ex. 1034).
`10 US 2001/0047838 A1, published Dec. 6, 2001 (Ex. 1069).
`11 A. Belkind et al., Pulsed-DC Reactive Sputtering of Dielectrics: Pulsing
`Parameter Effects, Society of Vacuum Coaters, 43rd Annual Technical
`Conference Proceedings, 86 (2000) (Ex. 1008).
`
`7
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`IPR2021-01030
`Patent 7,544,276 B2
`IPR2021-01030 “is identical to the Applied IPR in all substantive respects,”
`and “includes identical grounds, analysis, and exhibits and relies upon the
`same expert declarants and declarations”). For the same reasons provided in
`the Applied IPR Institution Decision (IPR2021-00103, Paper 13), which we
`incorporate expressly herein, we find that Petitioner demonstrates a
`reasonable likelihood of prevailing with respect to at least one of the
`challenged claims of the ’276 patent.
`III. GRANT OF MOTION FOR JOINDER
`Joinder in inter partes review is governed by 35 U.S.C. § 315(c):
`(c) JOINDER.—If the Director institutes an inter partes review,
`the Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition
`under section 311 that the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter parties review under section 314.
`
`“Any request for joinder must be filed, as a motion under § 42.22, no
`later than one month after the institution date of any inter partes review for
`which joinder is requested.” 37 C.F.R. § 42.122(b). As the moving party,
`Petitioner bears the burden of proving that it is entitled to the requested
`relief. 37 C.F.R. § 42.20(c). In deciding whether to grant a motion for
`joinder, the Board has considered (1) Petitioner’s explanation why joinder is
`appropriate, (2) whether any new grounds of unpatentability are asserted in
`the second petition, (3) what impact, if any, joinder would have on the cost
`and schedule for the existing proceeding, and (4) whether granting joinder
`will add to the complexity of briefing and/or discovery. See Consolidated
`Trial Practice Guide, 76 (Nov. 2019) (https://www.uspto.gov/
`
`8
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`IPR2021-01030
`Patent 7,544,276 B2
`TrialPracticeGuideConsolidated) (citing Kyocera Corp. v. Softview LLC,
`IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013)).
`The Applied IPR was instituted on May 11, 2021. Applied IPR,
`Paper 13. Petitioner filed a Motion for Joinder in this proceeding on June 4,
`2021. See Mot. Thus, Petitioner’s Motion for Joinder is timely because
`joinder was requested no later than one month after the May 11, 2021,
`institution date of the Applied IPR. See 37 C.F.R. § 42.122(b).
`Petitioner contends that joinder is appropriate here because it seeks to
`join the Applied IPR “solely as an ‘understudy,’ where Petitioner would
`only assume an active role in the event Applied Materials settles with Patent
`Owner . . . and moves to terminate the Applied IPR.” Mot. 1. Petitioner
`also observes that this IPR “is substantively identical to the corresponding
`Applied IPR” and “Petitioner will agree to consolidated filings and
`discovery, and procedural concessions, which Applied Materials does not
`oppose.” Id. at 2–3. According to Petitioner, this IPR “includes identical
`grounds, analysis, and exhibits and relies upon the same expert declarants
`and declarations” as the Applied IPR, and keeping the two separate “would
`entail needless duplication of effort.” Id. at 3. Petitioner further argues that
`“the case is amenable to consolidated filings” and agrees “to incorporate its
`filings with those of Applied Materials in a consolidated filing.” Id.
`Petitioner represents that this Petition “raises no new grounds of
`unpatentability from those of the Applied IPR.” Id. at 4.
`Petitioner also argues that there is no impact on the trial schedule for
`the Applied IPR, which “would not need to be delayed to effect joinder.” Id.
`at 4–5.
`Petitioner contends that joinder “will simplify briefing and discovery”
`because Petitioner and Applied Materials “will engage in consolidated
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`IPR2021-01030
`Patent 7,544,276 B2
`filings and discovery, which will simplify the briefing and discovery
`process.” Id. at 5.
`We are persuaded by Petitioner’s arguments, and by the fact that the
`motion is unopposed. Petitioner agrees to take an “understudy” role and not
`assume an active role in this proceeding, which favors joinder. Because the
`Petition challenges the same claims on the same grounds using the same
`prior art, we find this fact favors joinder. Indeed, the Board “routinely
`grants motions for joinder where the party seeking joinder introduces
`identical arguments and the same grounds raised in the existing proceeding.”
`Samsung Elecs. Co., Ltd. v. Raytheon Company, IPR2016-00962, Paper 12
`at 9 (PTAB Aug. 24, 2016). Moreover, because the issues to be decided are
`the same and Petitioner agrees to consolidating filings for all substantive
`papers in the Applied IPR, refraining from advancing separate arguments,
`using the same experts, and limiting its deposition time to the time already
`allotted, we find that these facts also favor joinder. See Mot. 3–5.
`For the reasons stated above, we determine that granting Petitioner’s
`Motion for Joinder is warranted.
`IV. CONCLUSION
`For the reasons set forth above, we determine that Petitioner has
`demonstrated a reasonable likelihood of prevailing with respect to at least
`one challenged claim of the ’276 patent. Thus, we institute an inter partes
`review on all challenged claims and on all grounds presented.
`We also find that Petitioner has made a sufficient showing in support
`of its unopposed Motion for Joinder. Accordingly, we grant Petitioner’s
`Motion for Joinder and join Petitioner to IPR2021-00103.
`
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`IPR2021-01030
`Patent 7,544,276 B2
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`V. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that an inter partes review is instituted on each of the
`grounds asserted in the Petition;
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and 37
`C.F.R. § 42.4, notice is hereby given of the institution of a trial, which shall
`commence on the entry date of this decision;
`FURTHER ORDERED that the Motion for Joinder with IPR2021-
`00103 is granted, and Petitioner is joined as a party to IPR2021-00103;
`FURTHER ORDERED that that Petitioner’s role in IPR2021-00103
`shall be limited as stated by Petitioner in the Motion for Joinder unless and
`until Applied Materials ceases to participate in IPR2021-00103;
`FURTHER ORDERED that, subsequent to joinder, the grounds for
`trial in IPR2021-00103 remains unchanged;
`FURTHER ORDERED that, subsequent to joinder, the Scheduling
`Order in place for IPR2021-00103 remains unchanged;
`FURTHER ORDERED that all further filings shall be made in
`IPR2021-00103;
`FURTHER ORDERED that, in IPR2021-00103, Petitioner will file
`each paper, except for any paper that does not involve the other party, as a
`single, consolidated filing with Applied Materials, subject to the page limits
`set forth in 37 C.F.R. § 42.24, and shall identify such filing as a consolidated
`filing;
`FURTHER ORDERED that, for any consolidated filing, if Petitioner
`wishes to file an additional paper to address points of disagreement with
`Applied Materials, Petitioner must request authorization from the Board to
`file a motion for an additional paper or pages;
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`IPR2021-01030
`Patent 7,544,276 B2
`FURTHER ORDERED that Petitioner shall collectively designate
`attorneys with Applied Materials to conduct the cross-examination of any
`witness produced by Patent Owner and the redirect of any witness produced
`by Applied Materials and Petitioner, within the timeframes set forth in 37
`C.F.R. § 42.53(c) or agreed to by the parties;
`FURTHER ORDERED that Petitioner shall collectively designate
`attorneys with Applied Materials to present at the oral hearing, if requested
`and scheduled, in a consolidated argument;
`FURTHER ORDERED that the case caption in IPR2021-00103 shall
`be changed in accordance with the attached example; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2021-00103.
`
`
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`12
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`IPR2021-01030
`Patent 7,544,276 B2
`FOR PETITIONER:
`
`David Cavanaugh
`Richard Goldenberg
`WILMER CUTLER PICKERING HALE AND DORR LLP
`david.cavanaugh@wilmerhale.com
`richard.goldenberg@wilmerhale.com
`
`
`FOR PATENT OWNER:
`
`H. Annita Zhong
`Benjamin Hattenbach
`C. Maclain Wells
`IRELL & MANELLA LLP
`hzhong@irell.com
`DemarayIprs@irell.com
`bhattenbach@irell.com
`mwells@irell.com
`
`
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`13
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`Trials@uspto.gov
`571-272-7822
`
`
`Paper 8
`Date: October 29, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLIED MATERIALS, INC. and INTEL CORPORATION,1
`Petitioner,
`v.
`DEMARAY LLC,
`Patent Owner.
`
`IPR2021-00103
`Patent 7,544,276 B2
`
`
`
`
`
`
`
`
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`1 Intel Corporation was joined as a petitioner in this proceeding based on a
`petition and motion for joinder filed in IPR2021-01030, both of which were
`granted.
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`