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
`
`
`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
`
`
`
`
`
`
`
`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
`
`
`
`
`
`
`
`
`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
`
`
`
`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.
`
`3
`
`
`
`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
`
`4
`
`
`
`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
`
`
`
`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
`
`
`
`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
`
`9, 10
`
`11, 12
`
`11, 13
`
`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
`
`
`
`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
`
`
`
`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
`
`9
`
`
`
`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.
`
`
`10
`
`
`
`IPR2021-01030
`Patent 7,544,276 B2
`
`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;
`
`11
`
`
`
`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.
`
`
`
`12
`
`
`
`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
`
`
`
`
`13
`
`
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`
`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.
`
`
`
`
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
