Case 6:20-cv-00636-ADA Document 92-9 Filed 03/31/21 Page 1 of 33
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`Exhibit 30
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`Case 6:20-cv-00636-ADA Document 92-9 Filed 03/31/21 Page 2 of 33
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`DEMARAY LLC,
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`Plaintiff,
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`v.
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`Defendant.
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`Plaintiff,
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`INTEL CORPORATION
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`DEMARAY LLC,
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`v.
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`SAMSUNG ELECTRONICS CO., LTD,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`SAMSUNG SEMICONDUCTOR, INC., and
`SAMSUNG AUSTIN SEMICONDUCTOR, LLC
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`Defendants.
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`Case No. 6:20-CV-00634-ADA
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`JURY TRIAL DEMANDED
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`Case No. 6:20-CV-00636-ADA
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`JURY TRIAL DEMANDED
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`DEFENDANTS’ FIRST AMENDED PRELIMINARY INVALIDITY CONTENTIONS
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`Defendants Intel Corporation (“Intel”), Samsung Electronics Co., Ltd., Samsung
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`Electronics America, Inc., Samsung Semiconductor, Inc., and Samsung Austin Semiconductor,
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`LLC (collectively, “Samsung”) (together, “Defendants”), by their attorneys, make these First
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`Amended Preliminary Invalidity Contentions concerning U.S. Patent Nos. 7,544,276 (“the ’276
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`patent”) and 7,381,657 (“the ’657 patent”) (collectively, the “Asserted Patents”) to Demaray LLC
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`(“Plaintiff” or “Demaray”) in connection with the above-referenced action, pursuant to the parties’
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`proposed Scheduling Order (Intel Case Dkt. 30), and the Court’s Scheduling Order (Samsung Case
`1
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`Case 6:20-cv-00636-ADA Document 92-9 Filed 03/31/21 Page 3 of 33
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`Dkt. 33) and the Court’s Updated Order Governing Proceedings – Patent Case (Intel Case Dkt. 37,
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`Samsung Case Dkt. 41). The citation of prior art herein and the accompanying exhibits are not
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`intended to reflect Defendants’ claim construction contentions, which will be disclosed in due
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`course in accordance with the Scheduling Order, and may instead reflect Plaintiff’s apparent (and
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`potentially erroneous) claim constructions based on its Infringement Contentions.
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`Defendants’ First Amended Preliminary Invalidity Contentions herein replaces
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`Defendants’ Preliminary Invalidity Contentions, which were served on December 11, 2020.
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`Specifically, this cover pleading replaces Defendants’ Preliminary Invalidity Contentions cover
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`pleading, which was served on December 11, 2020. The Exhibits referenced herein correspond to
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`the Exhibits previously served on December 11, 2020. For avoidance of doubt, Defendants’ prior
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`invalidity contentions with respect to 35 U.S.C. § 112 are withdrawn in view of Defendants’
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`present understanding of Plaintiff’s infringement contentions and the parties’ respective claim
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`construction positions.
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`Defendants’ First Amended Preliminary Invalidity Contentions herein reflect Defendants’
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`knowledge as of this early date in the present action. Defendants reserve the right, to the extent
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`permitted by the Court and the applicable statutes and rules, including but not limited to the Court’s
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`Order Governing Proceedings – Patent Case, to modify and/or supplement the Preliminary
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`Invalidity Contentions in response to becoming aware of additional prior art or information
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`regarding prior art, any modification or supplementation of Plaintiff’s Infringement Contentions,
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`any claim construction by the Court, or as otherwise may be appropriate.
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`The Scheduling Order and the Order Governing Proceedings – Patent Case contemplate
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`that these Preliminary Invalidity Contentions would be prepared and served in response to
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`Plaintiff’s Infringement Contentions. However, Plaintiff’s Infringement Contentions served
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`2
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`Case 6:20-cv-00636-ADA Document 92-9 Filed 03/31/21 Page 4 of 33
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`October 9, 2020 are insufficient because they lack proper and complete disclosure as to how
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`Plaintiff contends that Defendants infringe the Asserted Claims. For example, in its Preliminary
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`Infringement Contentions served October 9, 2020, Plaintiff only purports to cite evidence in its
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`infringement contentions in support of infringement allegations on claims 1-3 and 6-8 of the ’276
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`patent, and claim 1 of the ’657 patent. For other claims of the Asserted Patents, Plaintiff simply
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`alleges that “[d]iscovery … is currently believed to be required to determine whether [Defendants]
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`practice[] this claims.” Therefore, Defendants address claims 1-3 and 6-8 of the ’276 patent and
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`claim 1 of the ’657 patent in these preliminary invalidity contentions in light of the lack of notice
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`regarding these “other claims.” Defendants reserve the right to amend the Preliminary Invalidity
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`Contentions in response to any permissible supplementation or amendment of Plaintiff’s
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`Infringement Contentions. Due to Plaintiff’s failure to provide proper and complete disclosure of
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`its Infringement Contentions, under the Order Governing Proceedings – Patent Case, Defendants
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`reserve the right to seek leave from the Court to amend these Invalidity Contentions should
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`Plaintiff be allowed by the Court to amend its Infringement Contentions or its apparent claim
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`constructions. Defendants also reserve the right to amend these Invalidity Contentions in light of
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`positions that Plaintiff or its expert witnesses may assert concerning claim construction,
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`infringement, and/or invalidity issues.
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`Plaintiff served Supplemental Preliminary Infringement Contentions on February 5, 2021.
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`Defendants are in the process of reviewing these Supplemental Contentions, and reserve the right
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`to further amend or supplement Defendants’ Preliminary Invalidity Contentions in response to
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`Plaintiff’s Supplemental Contentions and/or any further supplementation, including in response to
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`additional claims asserted in the February 5, 2021 Supplemental Preliminary Infringement
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`Contentions.
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`Case 6:20-cv-00636-ADA Document 92-9 Filed 03/31/21 Page 5 of 33
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`Defendants’ Exhibits attached hereto cite to particular teachings and disclosures of the
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`prior art as applied to features of the asserted claims. However, persons having ordinary skill in
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`the art generally may view an item of prior art in the context of other publications, literature,
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`products, and understanding. As such, the cited portions of prior art identified herein are
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`exemplary only. Defendants may rely on the entirety of the prior art references listed herein,
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`including un-cited portions of those prior art references, and on other publications and expert
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`testimony shedding light on those prior art references, including as aids in understanding and
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`interpreting the cited portions, as providing context thereto and as additional evidence that the
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`prior art discloses a claim limitation.
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`Defendants will also rely on documents, products, testimony, and other evidence to
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`establish bases for and motivations to make combinations of certain cited references that render
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`the asserted claims obvious. Defendants may rely upon corroborating documents, products,
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`testimony, and other evidence including materials obtained through further investigation and third-
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`party discovery of the prior art identified herein, that describes the invalidating features identified
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`in these contentions; evidence of the state of the art in the relevant time period (irrespective of
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`whether such references themselves qualify as prior art to the Asserted Patents), including prior
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`art listed on the face of the Asserted Patents and/or disclosed in the specification (“Admitted Prior
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`Art”); and/or expert testimony to provide context to or aid in understanding the cited portions of
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`the identified prior art.
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`The references discussed in the Exhibits herein disclose the elements of the asserted claims
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`explicitly or inherently, and/or they may be relied upon to show the state of the art in the relevant
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`time frame. To the extent the attached claim charts cite to a reference for each element or limitation
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`of an asserted claim, Defendants contend that such reference anticipates that claim and/or renders
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`Case 6:20-cv-00636-ADA Document 92-9 Filed 03/31/21 Page 6 of 33
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`that claim obvious in view of the state of the art and/or knowledge of a person of ordinary skill in
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`the art. In addition, to the extent that the attached claim charts cite to additional references,
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`Defendants contend, in addition and/or in the alternative, that the asserted claim is rendered
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`obvious for the reasons set forth in the attached charts. To the extent suggested obviousness
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`combinations are included in the attached claim charts, they are provided in addition to and/or in
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`the alternative to Defendants’ anticipation contentions and are not to be construed to suggest that
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`any reference included in the combinations is not by itself anticipatory.
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`For purposes of these Preliminary Invalidity Contentions, Defendants identify prior art
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`references and provide element-by-element claim charts based, in part, on the apparent claim
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`constructions advanced by Plaintiff in its Infringement Contentions. Nothing stated herein shall
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`be treated as an admission or suggestion that Defendants agree with Plaintiff regarding either the
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`scope of any of the asserted claims or the claim constructions advanced in the Infringement
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`Contentions. Moreover, nothing in these Preliminary Invalidity Contentions shall be treated as an
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`admission that any Defendants’ accused technology meets any limitations of the claims.
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`Pursuant to the Order Governing Proceedings – Patent Case, Defendants have provided
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`disclosures and related documents pertaining only to the asserted claims as identified by Plaintiff
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`in its Infringement Contentions. See production volumes AMAT-DEM-PA_001 and DEFTS-
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`PA_001. Defendants will further supplement their document production should they later find
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`additional, responsive documents, such as, for example, documents produced by third-parties.
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`Much of the art identified in the attached Exhibits reflects common knowledge and the state of the
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`art prior to the filing date of the Asserted Patents.
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`5
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`Case 6:20-cv-00636-ADA Document 92-9 Filed 03/31/21 Page 7 of 33
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`Each of the asserted claims1 of the Asserted Patents is anticipated by and/or obvious in
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`view of one or more items of prior art identified herein, alone or in combination. The identification
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`of obviousness combinations is not intended to be exhaustive, as there are many possible
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`combinations of the references that one of ordinary skill in the art would have been motivated to
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`make.
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`I.
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`Priority
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`In its Infringement Contentions, Plaintiff contends that the asserted claims of the
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`Asserted Patents are “at a minimum … entitled to a priority date of at least as early March 16,
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`2002, which is the filing date of U.S. Utility App. No. 10/101,863.”
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`Plaintiff asserts that “the inventions of the Asserted Claims are currently believed to have
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`been conceived at some point between June 13 and June 26 of 2001 and reduced to practice at
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`least as early, and possibly earlier than July 6, 2001.”
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`It is Plaintiff’s burden to show it is entitled to a given priority date, and Defendants assert
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`that Demaray has failed to meet that burden. The documents produced by Plaintiff in support of
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`its alleged conception and reduction to practice dates do not show that the named inventors of the
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`Asserted Patents conceived of the asserted claims at some point between June 13, 2001 and June
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`26, 2001; do not show that the named inventors of the Asserted Patents were diligent in reducing
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`to practice their alleged inventions; and do not show that the alleged inventions were actually
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`reduced to practice at least as early as July 6, 2001. For purposes of these Preliminary Invalidity
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`Contentions, Defendants identify art that qualifies as prior art under 35 U.S.C. §102 (pre-AIA)
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`on or before March 16, 2002, the filing date of the earliest allegedly related divisional or
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`continuation application to the Asserted Patents.
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`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.
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`Case 6:20-cv-00636-ADA Document 92-9 Filed 03/31/21 Page 8 of 33
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`II.
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`State of the Art
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`The references discussed in the Exhibits herein may be relied upon to show the state of
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`the art in the relevant time frame. This prior art identification is only exemplary and is not in any
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`way intended to limit the scope of what one of ordinary skill in the art would have understood at
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`the relevant time period of the alleged inventions or the breadth of the state of the art to which
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`the alleged inventions of the Asserted Patents relate. Defendants reserve the right to rely upon
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`additional prior art, information, testimony, and/or knowledge to demonstrate what one of
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`ordinary skill in the art would have understood prior to the date of the alleged invention of the
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`asserted claims of the Asserted Patents.
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`III.
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`Identification of Prior Art
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`Defendants intend to rely upon the prior art identified below, and any additional prior art
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`identified in the prosecution history of the Asserted Patents (including those identified in the
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`prosecution history of their patent family and/or related patents), subject to the stipulation provided
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`below in Section V. Stipulation Regarding Currently Pending Inter Partes Reviews (“IPRs”) of
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`Asserted Patents.
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`In these Preliminary Invalidity Contentions, including in the attached Exhibits, Defendants
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`provide the full identity of each item of prior art, including: (1) each patent by its patent number,
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`country of origin, and date of issue; (2) each non-patent publication by its title, date of publication,
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`and, where feasible, author and publisher; (3) 35 U.S.C. § 102(b) prior art by the item offered for
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`sale or publicly used or known, the date the offer or use took place or the information became
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`known, and the identity of the person or entity which made the use or which made and received
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`the offer, or the person or entity which made the information known or to whom it was made
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`known; (4) 35 U.S.C. § 102(f) prior art by the name of the person(s) from whom and the
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`circumstances under which the invention or any part of it was derived; and (5) 35 U.S.C. § 102(g)
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`7
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`Case 6:20-cv-00636-ADA Document 92-9 Filed 03/31/21 Page 9 of 33
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`prior art by the identities of the person(s) or entities involved in and the circumstances surrounding
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`the making of the invention before the patent applicant(s), based on currently available
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`information.
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`Defendants’ identification of patents and publications as prior art herein and in the attached
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`claim charts under 35 U.S.C. §§ 102(a), (b), (e), and/or (g) and § 103 includes the publications
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`themselves as well as the use of the products, devices, and systems described therein. Although
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`Defendants’ investigation continues, information available to date indicates that such products,
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`devices, and systems were known or used in the country before the alleged invention of the claimed
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`subject matter of the asserted claims, and/or were invented by another who did not abandon,
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`suppress, or conceal, before the alleged invention of the claimed subject matter of the asserted
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`claim. Upon information and belief, these prior art products, devices, and systems and their
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`associated references anticipate and/or render obvious each of the asserted claims. Defendants
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`further intend to rely on inventor admissions concerning the scope of the prior art relevant to the
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`Asserted Patents found in, inter alia, the prosecution history for the Asserted Patents and any
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`related patents, patent applications, and/or re-examinations; any deposition testimony of the named
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`inventors on the Asserted Patents; and the papers filed and any evidence submitted by Plaintiff in
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`conjunction with this litigation.
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`Defendants reserve the right to rely upon additional evidence of invalidity obtained in the
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`future, including, for example, from third parties.2 In addition, Defendants reserve the right to
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`assert invalidity under 35 U.S.C. § 102(c) or (d) to the extent that further investigation and
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`discovery yield information forming the basis for such claims.
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`2 Pursuant to the Proposed Joint Scheduling Order (Samsung Case Dkt. 47), Fact Discovery
`opens April 7, 2021.
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`8
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`Case 6:20-cv-00636-ADA Document 92-9 Filed 03/31/21 Page 10 of 33
`Case 6:20-cv-00636-ADA Document 92-9 Filed 03/31/21 Page 10 of 33
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`A.
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`Prior Art Patents
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`Defendants contend the following prior art patents anticipate or render obvious one or more
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`asselted claims of the Asserted Patents under 35 U.S.C. §§ 102(a), (b), and/or (e) or 35 U.S.C. §
`
`l
`
`03 :
`
`fizzygzaagzz,
`2:233:22;
`
`2:232:21?
`
` 6,695,954
`
`US
`
`2002/0046944
`
`Filed Jun. 27, 2001 as a non-provisional
`application of provisional application
`file(1 Jun. 28, 2000
`Published Ar. 25, 2002
`
`Filed Jul. 18, 2001
`
`Geva
`
`.
`
`US
`
`6’077’384
`
`Filed Feb. 2, 1996, from a continuation-
`in—palt (CIP) filed Aug. 31, 1995, from a
`CIP filed Aug. 11, 1994
`Issued Jun. 20, 2000
`
`Filed Oct. 22, 1992, from a continuation
`filed Sep. 9, 1991
`IssuedAr. 12, 1994
`
`Miller
`
`Filed Oct. 29, 1984, from a continuation
`filed Jan. 6, 1984
`
`Celestino
`
`IssuedAr. l, 1986
`
`Filed Oct. 11, 2001, from a continuation
`filed Nov. 19, 1997, from a CIP filed
`
`Aug. 7, 1997
`Issued Feb. 24, 2004
`
`Filed Mar. 5, 1998
`Issued Nov. 28, 2000
`
`6’153’068
`
`Hang
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`Case 6:20-cv-00636-ADA Document 92-9 Filed 03/31/21 Page 11 of 33
`Case 6:20-cv-00636-ADA Document 92-9 Filed 03/31/21 Page 11 of 33
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`-_—_
`
`2:323:93;
`
`532??“ “”3”"
`
`WW
`
`2’33?‘ 0””"'
`WOW
`M"? “‘M"”e'
`A
`
`”M“
`09/ 145,323
`
`f§:33:3:;_1§i,11999§3
`
`reference 1n Bat be:
`
`geeks
`
`PubhshedJun. 10,1999
`Issued Ma 6, 2003
`
`Filed Apr. 11, 2000
`
`10
`
`
`
`153333;; 333°]? 2003
`-- Filed.Nov. 20, 1998; -
`
`US
`
`6,559,593
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`

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`Case 6:20-cv-00636-ADA Document 92-9 Filed 03/31/21 Page 12 of 33
`Case 6:20-cv-00636-ADA Document 92-9 Filed 03/31/21 Page 12 of 33
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`
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`22:32:23,200]
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`fisfiiititfiiflggs
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`Defendants intend to rely upon the prior an identified above, subject to the stipulation
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`provided below in Section V. Stipulation Regarding Currently Pending Inter Partes Reviews
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`(“IPRs”) of Asserted Patents.
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`B.
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`Prior Art Publications
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`Defendants contend the following publications anticipate or render obvious one or more
`
`asserted claims of the Asserted Patents under 35 U.S.C. §§ 102(a) and/or (b) or 35 U.S.C. § 103:
`
`Author (s)
`Publication Title m Publisher
`Kell et al
`The Deposition of Aluminium Oxide
`,
`'
`“ y
`Elsevier
`Dec. 1996
`Coatings by Reactive Unbalanced
`( KeIIv-1996’)
`.
`Ma u etronS.utter1n-‘
`
`Reactive pulsed magnetron sputtering
`recess for alumina films
`
`2000
`
`J. of Vac. Sci. &
`Techn. A
`
`Kelly et a1.
`“Kellv”
`
`Technolo 3
`
`32:;tiiligfi(1:212:32)2313,12??th
`p
`.
`y
`gn
`s utterm -
`
`Jul/Aug
`2000
`
`American Vacuum
`Society
`
`Handbook of Radio and Wireless
`
`1999
`
`McGraw-Hill
`
`J00 et al.
`(“J00”)
`
`Gibilisco
`
`ll
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`

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`Case 6:20-cv-00636-ADA Document 92-9 Filed 03/31/21 Page 13 of 33
`Case 6:20-cv-00636-ADA Document 92-9 Filed 03/31/21 Page 13 of 33
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`Publication Title m Publisher
`The Advanced Energy MDX
`Advanced Energy
`Magnetron Drive
`Industries Inc
`’
`'
`Advanced Ener
`.
`gy
`Industries, Inc.
`
`Pinnacle 10x6 kW User Manual
`
`May 2000
`
`Mar. 1993
`
`
`
`Author (s)
`Advanced
`Energy
`Industries, Inc.
`Advanced
`Energy
`.
`Industries, Inc.
`Advanced
`Energy.
`Industnes, Inc.
`Belkind et al.
`“
`.
`,
`( Bel/mu? )
`
`Sproul et al.
`,,
`“
`( Sproul—NPL )
`
`Advanced Energy
`Industries Inc
`’
`'
`Society ofVacuum
`Coaters
`
`-
`Elsev1er
`
`Lattice Press
`
`Vii/01f et, al.
`W0]
`
`Noyes Publications
`
`Society ofVacuum
`Coaters
`
`Morton et a1.
`“Morton”
`
`Surface & Coatings
`Technolo 3
`Sru'face & Coatings
`Technolo;
`
`Sellers
`“Sellers-NPL”
`Scholl (“Scholl-
`NP ”
`
`Carter ( Carter-
`Carter( Carter-
`
`Surface & Coatings
`Technology
`
`Safi (“Sufi-
`1998 ")
`
`Surface & Coatings
`Technology
`
`Pinnacle 20 kW (400-1000 Vdc) User
`Manual
`
`Apr. 2001
`
`Pulsed-DCReactlve Sputtering 0f
`D1electncs. Pulsmg Parameter
`Effects
`
`High-rate reactive DC magnetron
`sputtering of oxrde and mtnde
`.
`.
`su n erlattrce coatm ' s
`
`Srlrcon Processrng for the VLSI Era,
`Vol. 1
`
`Handbook of Physical Vapor
`Deposition (PVD) Processing — Film
`Formation, Adhesion, Surface
`Preparation and Contamination
`Control
`
`Bipolar Pulsed DC Sputtering of
`0 tical Films
`
`Asymmetric bipolar pulsed DC: the
`enablin - technolo 3 for reactive PVD
`Power systems for reactive sputtering
`of insulatin fihns
`
`Apr. 2000
`
`1998
`
`2000
`
`1999
`
`1998
`
`1997
`
`More Filter Design on a Budget
`Filter Design in Thirty Seconds
`
`Dec. 2001
`Dec. 2001
`
`The Properties 0f Reactively
`Sputtered, Stoichiometry-Controlled
`And Optimurn—Conductivity
`Transparent Zinc/Aluminium Oxide
`Films As A Function Of Their
`
`Aluminium Content
`
`A Novel Reactive Magnetron
`Sputtering Technique for Producing
`Insulating Oxides of Metal Alloys
`and Other Co I 0 ound Thin Fihn
`
`High Rate Deposition Of Nickel
`Oxide Electrochromic T] . Fihns B
`
`1995
`
`Mat. Res. Soc.
`
`.
`Yoshmmra
`
`12
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`Case 6:20-cv-00636-ADA Document 92-9 Filed 03/31/21 Page 14 of 33
`Case 6:20-cv-00636-ADA Document 92-9 Filed 03/31/21 Page 14 of 33
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`Author (s)
`Publication Title m Pu '
`Reactive Dc Magnetron Sputtering - _
`Reactive Magnetron Deposition 0f
`"[1 .
`.
`.
`.
`Trans arent Conductive Films
`SOhd Films
`
`1980
`
`
`
`Very-High-Rate Reactive Sputtering
`of Alumina Hard Coatin 5
`
`1997
`
`Surface & Coatings
`Technology
`
`Schneider
`
`Defendants intend to rely upon the prior art identified above, subject to the stipulation
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`provided in Section V. Stipulation Regarding Currently Pending Inter Partes Reviews (“IPRs”) of
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`Asserted Patents.
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`C.
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`Prior Art Systems
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`Plaintiff has alleged in its preliminary infringement contentions that Defendants have
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`infringed via their use of reactive magnetron sputtering reactors, including the reactors in the
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`Endura product line from Applied Materials, Inc. (“Applied Materials”), for physical vapor
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`deposition of layers, identifying titanium nitride and tantalum nitride.
`
`Upon information and belief, the below prior art systems concern the physical vapor
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`deposition of layers, such as titanium nitride and/or tantalum nitride, and were used, sold, or
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`offered for sale before the Asserted Patents.
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`Defendants contend that these prior art systems, either alone or in combination with other
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`prior art, render invalid one or more asserted claims of the Asserted Patents under 35 U.S.C §§
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`102(a), (b), and/or (g), or 35 U.S.C. § 103.
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`Fact Discovery in this litigation has not begun, and Defendants’ prior art investigation,
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`including via discovery into prior art systems, such as these identified below or other systems
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`Defendants are currently unaware of, is therefore not yet complete. Defendants reserve the right
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`to rely upon additional evidence of invalidity obtained in the future as to any prior art system used
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`13
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`Case 6:20-cv-00636-ADA Document 92-9 Filed 03/31/21 Page 15 of 33
`Case 6:20-cv-00636-ADA Document 92-9 Filed 03/31/21 Page 15 of 33
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`publicly, sold, or offered for sale that may anticipate or render obvious one or more asserted claims
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`of the Asserted Patents under 35 U.S.C. §§ 102(a), (b), and/or (g), or 35 U.S.C. § 103.
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`mm Evidence ofPublic Use, Sale, or Offer to Sell
`
`Applied Materials Vectra
`IMP
`
`Late 1990s
`
`Oct. 28, 1998 Press Release: “Cirent
`
`Semiconductor Selects Applied Materials IMP
`Line/Barrier Technology for Most Advanced
`Devices”
`
`Applied Materials Self
`Ionized Plasma (SIP)
`
`At least as
`
`early as Nov.
`2000
`
`Nov. 6, 2000 EE Times “Applied says self-
`ionized plasma system extends PVD to lOO—nm
`regime”
`
`Applied Materials Endura
`Electra Cu Banier/Seed
`
`At least as
`
`early as July
`1998
`
`July 10, 1998 Press Release: “AMD Selects
`Applied Materials’ Copper Technology; Electra
`IMP TaN and Copper Seed Layer Processes
`will be used for Copper Interconnect Structures
`
`Nov. 15, 1999 Press Release, “Sematech
`
`Validated Applied Materials Electra Cu Banier
`& Seed System for Copper Chip Production”
`
`Dec. 1, 1998 Press Release: “Novellus
`
`Ships Multiple Sabre and INOVA Systems”
`
`May 17, 1999 Press Release: “Novellus Ships
`Sabre and INOVA Systems to Lucent”
`
`July 10, 2000 Press Release: “Novellus Systems
`Introduces INOVA xT, the First 100 WPH PVD
`
`System”
`
`coaters (1999).
`
`At least as
`
`early as Dec.
`1998
`
`At least as
`
`early as July
`2000
`
`Novellus INOVA
`
`Novellus INOVA xT
`
`Denton Vacuum prior art
`reactors and methods,
`including the Denton
`Vacuum Discovery 18
`sputtering system and
`methods usin such 3 stem
`
`At least as
`
`early as 1999
`
`D.E. Morton et al., Bipolar Pulsed DC
`Sputtering of Optical Fihns, Soc. of Vacuum
`
`

`

`Case 6:20-cv-00636-ADA Document 92-9 Filed 03/31/21 Page 16 of 33
`Case 6:20-cv-00636-ADA Document 92-9 Filed 03/31/21 Page 16 of 33
`
`m Evidence ofPublic Use, Sale, or Offer to Sell
`
`
`
`Advanced Energy prior art
`PVD reactors and methods,
`including reactors and
`methods using Advanced
`Energy Pinnacle Plus
`power supplies to the target
`
`At least as
`early as Feb.
`2001
`
`ENI prior art PVD reactors At least as
`and methods
`early as 1998
`
`Pinnacle Plus+ 10 kW (325-650 Vdc) User
`Manual to Advanced Energv Industries, Inc.
`(Nov. 2001); Pinnacle Plus Datasheet (Apr.
`1999); Advanced Energy Industries, Inc — Form
`10—K (for fiscal year ended December 31,
`2000); Bel/(ind et a]. (authors affiliated with
`Advanced Energy Industries, Inc.)_, Pulsed-DC
`Reactive Sputtering of Dielectrics: Pulsing
`Parameter Effects (2000).
`
`J. Sellers, Asymmetric bipolar pulsed DC: the
`enabling technology for reactive PVD, Surface
`and Coatings Technology 98 (1998) 1245-1250
`(1998); US. Patent No. 5,651,865 to Sellers,
`titled “Preferential Sputtering of Insulators from
`Conductive Tar ets,” assi u: ed to ENI
`
`D.
`
`Prior Art under 35 U.S.C. § 102(1)
`
`Defendants contend that the claims of the Asserted Patents are invalid under 35 U.S.C. §
`
`102(f) for failure to name all proper inventors.
`
`The Asserted Patents, and the US. Utility App. No. 10/101,863 (“’863 Application”), from
`
`which the Asserted Patents allege priority, all name Richard E. Demaray, Hongmei Zhang,
`
`Mukundan Narasimhan, and Ravi Mullapudi as named inventors.
`
`The claims of the Asserted Patents, however, require “a narrow band rejection filter”
`
`between “DC power” and “target” elements. On information and belief, prior to the filing of
`
`the ’863 Application, Robert Weisse (“Weisse”) was a third-party consultant who assisted some
`
`of the named inventors of the Asserted Patents, and their related company, Symmorphix, with all
`
`ofits RF-related work. On information and belief, Weisse recommended that Symmorphix include
`
`a narrow band rejection filter coupled between the DC power supply and the target to prevent the
`
`DC power supply fiom being destroyed, and subsequently designed and built the contemplated
`
`15
`
`

`

`Case 6:20-cv-00636-ADA Document 92-9 Filed 03/31/21 Page 17 of 33
`
`
`
`
`
`
`
`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
`
`
`
`16
`
`

`

`Case 6:20-cv-00636-ADA Document 92-9 Filed 03/31/21 Page 18 of 33
`
`
`
`
`
`
`
`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
`17
`
`
`
`

`

`Case 6:20-cv-00636-ADA Document 92-9 Filed 03/31/21 Page 19 of 33
`
`
`
`
`
`
`
`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 an