• Sure-Fire Electrical Corporation v. Yongjiang Yin And Shenzhen El Lighting Co. Ltd.All claims unpatentable
  PTAB · Feb 22, 2016 · IPR2014-01448 · APJ Debra K Stephens · IPR · Final written decision

  Claims 1 and 7 are unpatentable as obvious over He and Korodi; the Board did not reach the Gustafsson and He ground.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “its claims, but instead, recited only “emits.” Patent Owner has not proffered any evidence or argument as to why “emits and dies” used in the ’279 Patent Specification, would have been abbreviated to “emits” in recitation of the claims. Nor is the term “emits” defined explicitly in the ’279 Patent Specification. Thus, we begin with the assumption that the term “emits” does not include “and dies,” as that comports with the plain and ordinary meaning of the word “emits” Thus, taking the plain and ordinary meaning at the time of the invention, we interpret “emits light in sequence” as “throws off or gives off or out light in a continuous or connected series” and interpret “emits in sequence” as “throws off or gives off or out, in a continuous or connected series” (see e.g., Merriam-Webster’s Collegiate Dictionary 377, 1065 (10th ed. 2000)). Patent Owner has not proffered sufficient evidence or argument that “emits light in sequence” and “emits in sequence” should be read more narrowly than the plain and ordinary meaning as suggested by Patent Owner. Specifically, Patent Owner’s assertion that the Specification supports the proposed interpretation of “emits light in sequence” as “emits and dies light in sequence” is misplaced. The Specification of the ’279 Patent does not explicitly define “emits light in sequence” as “emits and dies light in sequence.” Nor is any explicit definition provided for “emits light in sequence” or “emits in sequence.” Patent Owner would have us import limitations disclosed in several of the embodiments, including Embodiment 1, to interpret “emits” as “emits and dies light in sequence” or “emits and” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “Patent Owner additionally asserts “Patent Owner specifically disclaimed emission of light over the full length of the cable, but rather limited the patent to segment by segment illumination along the length of the cable,” thereby limiting the phrase “emits light in sequence” (PO Resp. 43). Patent Owner identified pages 9–10 of the Response to Office Action filed September 18, 2009 (Ex. 1002, 25–26), as providing this disclaimer (PO Resp. 48–49). However, we agree with Petitioner that the statements in the Response to Office Action do not disclaim subject matter, nor do these statements provide an explicit definition of “emits,” “emits light in sequence, and “emits in sequence.” Indeed, the discussion, limited to claim 7, discusses the object of the invention and distinguishes the invention as recited in claim 7 over the cited prior art, Baumberg et al. (US 5,869,930) (Resp. to OA 9–10). This discussion does not qualify as “clear and unmistakable” disavowing statements as required to meet the “demanding standard for finding a disclaimer.” Avid Tech., Inc. v. Harmonic, Inc., No. 2015-1246, 2016 WL 363410, at *4 (Fed. Cir. Jan. 29, 2016). We, therefore, determine the term “emits light in sequence” and “emits in sequence” used in the claims, should not be interpreted as “emits and dies light of each electroluminescent cored bar or cord in succession, one after the other,” but instead, should be interpreted giving the terms their ordinary and customary meaning as understood by an ordinarily skilled artisan at the time of the invention, in light of the Specification.” slip op. at 10

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “(PO Resp. 37–40). A reference qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention. Innovention Toys, LLC, v. MGA Entm’t, Inc., 637 F.3d 1314, 1322 (Fed. Cir. 2011); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Bigio, 381 F.3d at 1325 (citations omitted).” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Nonetheless, we find Petitioner has articulated reasoning with a rational underpinning as to why an ordinarily skilled artisan would have been motivated to combine the teachings (Pet. 34–36; Ex. 1008 ¶¶ 98–104). Specifically, Petitioner contends an ordinarily skilled artisan would have been motivated to combine the teachings of He and Korodi because “such a modification is both a predictable variation and an incremental improvement” (Pet. 35). According to Petitioner, an ordinarily skilled artisan would have found it obvious and “straight-forward” to replace the aluminum core wire in He with a power cord to create an improved illuminated cable using electroluminescent wires that light in sequence (id. at 36). Petitioner further asserts combining the teachings would “involve the merger of familiar elements according to their established functions, known methods, and predictable results” (id.). We agree with the Petitioner that an ordinarily skilled artisan would have been motivated to replace the core wire at the center of He’s cable with a power cord as taught by Korodi to create an improved illuminated cable. We find the combination of He and Korodi unites old elements with no change in their respective functions. Indeed, we agree that combining the teachings would be a merger of familiar elements, Korodi’s power cord and He’s electroluminescent cable, that perform their ordinary functions to predictably result in the recited cable which includes a main power cord and a plurality of electroluminescent cords which emit light in sequence when the main cord and the driver are live. To be nonobvious, an improvement must be “more than the predictable use of prior art elements according to their established functions.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). Additionally, as further support, we credit Petitioner’s Declarant’s, Dr. Mark Horenstein’s, testimony that replacing the aluminum core wire in He for the power cord in Korodi would have been a merger of familiar elements according to their established functions, known methods, and predictable results that an ordinarily skilled artisan would have found obvious (Ex. 1008 ¶¶ 99, 102, 103).” slip op. at 20

  Patent outcomesUS 7,671,279 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,671,279
• Fujitsu Semiconductor Limited / Fujitsu Semiconductor America, Inc. et al. v. Zond, LLCAll claims unpatentable
  PTAB · Nov 3, 2015 · IPR2014-00828 · APJ Joni Y Chang · IPR · Final written decision

  Claims 30–37, 39, and 40 are unpatentable under § 103(a) over Iwamura, Angelbeck, and Pinsley, with Wells or Lovelock added for specified dependent claims.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “Zond’s expert, Dr. Larry D. Hartsough, also testifies that, in the context of the ’779 patent, one with ordinary skill in the art at the time of the invention would have understood that a plasma includes charged particles (ions and electrons), as well as neutral atoms—namely, ground state atoms, excited atoms, and metastable atoms—because not every atom is ionized. Ex. 1223, 42:9–43:17. We observe that the ’779 patent uses the term “plasma” in accordance with its ordinary and customary meaning as would be understood by one with ordinary skill in the art. For instance, the Specification of the ’779 patent states that “[a] plasma is a collection of charged particles that move in random directions,” and further explains that a plasma also includes excited and metastable atoms. Ex. 1201, 1:7–8, 8:43–48. We are cognizant that, in an ideal situation, a plasma can be fully ionized, which contains only charged particles (ions and electrons). Ex. 1223, 42:9–43:17. Based on the evidence before us, we construe the claim term “plasma” as “a collection of ions, electrons, ground state atoms, excited atoms, and metastable atoms,” consistent with the term’s ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the Specification of the ’779 patent.” slip op. at 9

  • Skill levelOther

    “teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418; Translogic, 504 F.3d at 1262. We also recognize that prior art references must be “considered together with the knowledge of one of ordinary skill in the pertinent art.” Paulsen, 30 F.3d at 1480 (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)); Translogic, 504 F.3d at 1259–1262. Notwithstanding that Dr. Hartsough provides a definition of “a person of ordinary skill in the 10 art” in the context of the ’779 patent,5 we are mindful that the level of ordinary skill in the art also is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Based on the evidence in this record, we credit Dr. Kortshagen’s testimony (Ex. 1221 ¶¶ 39–46, 58–59) that magnets, such as those disclosed in Pinsley and Angelbeck, generate a magnetic field that substantially traps electrons in a plasma apparatus. Notably, the Admitted Prior Art (Figure 1 of the ’779 patent) discloses a plasma sputtering apparatus, having magnets that generate a magnetic field to trap electrons. Ex. 1201, 3:9–18 (“The magnetic field 132 is shaped to trap and concentrate secondary electrons proximate to the target surface.”). Dr. Hartsough acknowledges that, since the mid-1970s, using magnets for trapping electrons in magnetron sputtering systems was well-known in the art. Ex. 1223, 20:13–21:1. Both Dr. Kortshagen’s testimony (Ex. 1221 ¶¶ 39–46, 58–59) and Dr. Hartsough’s cross-examination testimony (Ex. 1223, 123:4–13) are consistent with the prior art of record, including the Admitted Prior Art, which recognizes a magnetic field is strongest at the poles of the magnet and weakest in the region at the center between the poles (Ex. 1201, 3:12–13). As discussed above, the prior art of record clearly shows that it was well-known in the art at the time of the invention to use magnets in a plasma apparatus for trapping electrons. Based on the prior art of record, we agree with Dr. Kortshagen that “the use of magnets and their corresponding magnetic fields to trap electrons . . . was already known in the prior art,” at the time of the invention. See Ex. 1221 ¶ 37.” slip op. at 24

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “Here, GlobalFoundries relies upon Angelbeck and Pinsley to show that generating a magnetic field to trap electrons in a plasma apparatus was well-known in the art at the time of the invention. Pet. 47–49, 52, 54–55. Indeed, both Angelbeck and Pinsley teach the use of a magnet to generate a magnetic field for increasing the efficiency of exciting atoms in a plasma apparatus. Ex. 1205, 2:43–48; Ex. 1206, 1:36–41. Zond’s expert, Dr. Hartsough, also acknowledges that, since the mid-1970s, using magnets for trapping electrons in magnetron sputtering systems was well-known in the art. Ex. 1223, 20:13–21:1. Moreover, the Admitted Prior Art (Figure 1 of the ’779 patent) discloses a plasma sputtering apparatus, having magnets that generates magnetic field to trap electrons. Ex. 1201, 3:9–18 (“The magnetic field 132 is shaped to trap and concentrate secondary electrons proximate to the target surface.”). Given the evidence before us, we agree with Dr. Kortshagen that one with ordinary skill in the art would have been motivated, in view of Angelbeck and Pinsley, to use a magnet with Iwamura’s pre-excitation unit and first plasma generation unit—which are located proximate to the ground 30 state atoms source (gas supply 20)—for generating a magnetic field to trap electrons, in order to increase the efficiency of excitation of ground state atoms. Ex. 1202 ¶¶ 120, 140–41. We credit Dr. Kortshagen’s testimony, as it is consistent with the disclosures of Angelbeck and Pinsley, and other prior art of record. Upon consideration of the parties’ contentions and the evidence in this entire record, we determine that GlobalFoundries has demonstrated that combining the technical disclosures of Iwamura, Angelbeck, and Pinsley is merely a predictable use of prior art elements according to their established functions—an obvious improvement. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). Therefore, GlobalFoundries has provided an articulated reason with rational underpinnings for modifying Iwamura in view of Angelbeck and Pinsley. X-ray radiation” slip op. at 30

  Patent outcomesUS 6,805,779 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,805,779
• Fujitsu Semiconductor Limited / Fujitsu Semiconductor America, Inc. et al. v. Zond, LLCAll claims unpatentable
  PTAB · Nov 3, 2015 · IPR2014-00917 · APJ Joni Y Chang · IPR · Final written decision

  Claims 7, 9, 20, 21, 38, and 44 are unpatentable under § 103(a) over the specified combinations of Iwamura, Angelbeck, and Pinsley with Gruber or Wells.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In that regard, an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418; Translogic, 504 F.3d at 1262. We also recognize that prior art references must be “considered together with the knowledge of one of ordinary skill in the pertinent art.” Paulsen, 30 F.3d at 1480 (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)); Translogic, 504 F.3d at 1259–1262. Notwithstanding 10 that Dr. Hartsough provides a definition of “a person of ordinary skill in the art” in the context of the ’779 patent,6 we are mindful that the level of ordinary skill in the art also is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “context of the ’779 patent, one with ordinary skill in the art at the time of the invention would have understood that a plasma includes charged particles (ions and electrons), as well as neutral atoms—namely, ground state atoms, excited atoms, and metastable atoms—because not every atom is ionized. Ex. 1419, 42:9–43:17. We observe that the ’779 patent uses the term “plasma” in accordance with its ordinary and customary meaning as would be understood by one with ordinary skill in the art. For instance, the Specification of the ’779 patent states that “[a] plasma is a collection of charged particles that move in random directions,” and further explains that a plasma also includes excited and metastable atoms. Ex. 1401, 1:7–8, 8:43–48. We are cognizant that, in an ideal situation, a plasma can be fully ionized, which contains only charged particles (ions and electrons). Ex. 1419, 42:9–43:17. 9 Based on the evidence before us, we construe the claim term “plasma” as “a collection of ions, electrons, ground state atoms, excited atoms, and metastable atoms,” consistent with the term’s ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the Specification of the ’779 patent.” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Here, GlobalFoundries relies upon Angelbeck and Pinsley to show that generating a magnetic field to trap electrons in a plasma apparatus was well-known in the art at the time of the invention. Pet. 44–47. Indeed, both Angelbeck and Pinsley teach the use of a magnet to generate a magnetic field for increasing the efficiency of exciting atoms in a plasma apparatus. Ex. 1405, 2:43–48; Ex. 1406, 1:36–41. Zond’s expert, Dr. Hartsough, also acknowledges that, since the mid-1970s, using magnets for trapping electrons in magnetron sputtering systems was well-known in the art. Ex. 1419, 20:13–21:1. Moreover, the Admitted Prior Art (Figure 1 of the ’779 patent) discloses a plasma sputtering apparatus, having magnets that generates magnetic field to trap electrons. Ex. 1401, 3:9–18 (“The magnetic field 132 is shaped to trap and concentrate secondary electrons proximate to the target surface.”). Given the evidence before us, we agree with Dr. Kortshagen that one with ordinary skill in the art would have been motivated, in view of Angelbeck and Pinsley, to use a magnet with Iwamura’s pre-excitation unit and first plasma generation unit—which are located proximate to the ground state atoms source (gas supply 20)—for generating a magnetic field to trap electrons, in order to increase the efficiency of excitation of ground state atoms. Ex. 1402 ¶ 139. We credit Dr. Kortshagen’s testimony, as it is 34 consistent with the disclosures of Angelbeck and Pinsley, and other prior art of record. Upon consideration of the parties’ contentions and the evidence in this entire record, we determine that GlobalFoundries has demonstrated that combining the technical disclosures of Iwamura, Angelbeck, and Pinsley is merely a predictable use of prior art elements according to their established functions—an obvious improvement. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). Therefore, GlobalFoundries has provided an articulated reason with rational underpinnings for modifying Iwamura in view of Angelbeck and Pinsley. Trapping electrons and ions” slip op. at 34

  Patent outcomesUS 6,805,779 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,805,779
• Fujitsu Semiconductor Limited / Fujitsu Semiconductor America, Inc. et al. v. Zond, LLCAll claims unpatentable
  PTAB · Nov 3, 2015 · IPR2014-00829 · APJ Joni Y Chang · IPR · Final written decision

  Claims 16, 28, 41, 42, and 45 are unpatentable as obvious over Iwamura, Angelbeck, and Pinsley; claim 46 is unpatentable as anticipated by Iwamura.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for petitioner

    “(ions and electrons), as well as neutral atoms—namely, ground state atoms, excited atoms, and metastable atoms—because not every atom is ionized. Ex. 1317, 42:9–43:17. We observe that the ’779 patent uses the term “plasma” in accordance with its ordinary and customary meaning as would be understood by one with ordinary skill in the art. For instance, the Specification of the ’779 patent states that “[a] plasma is a collection of charged particles that move in random directions,” and further explains that a plasma includes excited atoms and metastable atoms. Ex. 1301, 1:7–8, 8:43–48. We are cognizant that, in an ideal situation, a plasma can be fully ionized, which contains only charged particles (ions and electrons). Ex. 1317, 42:9–43:17. Based on the evidence before us, we construe the claim term “plasma” as “a collection of ions, electrons, ground state atoms, excited atoms, and metastable atoms,” consistent with the term’s ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the Specification of the ’779 patent.” slip op. at 9

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “In its Petition, GlobalFoundries identifies four claim elements recited in claims 41 and 42 as means-plus-function elements, invoking 35 U.S.C. § 112, ¶ 6, but Zond did not proffer any claim constructions as to these claim elements prior to institution of this inter partes review.6 Pet. 17–19; Prelim. 6 Section 4(c) of the AIA re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Pub. L. No. 112-29, 125 Stat. 284, 296 (2011). Because the ’779 9 Resp. 18–19. We agree with GlobalFoundries that these claim elements are written in means-plus-function form and fall under § 112 ¶ 6, because: (1) each claim element uses the term “means for”; (2) the term “means for” in each claim element is modified by functional language; and (3) the term “means for” is not modified by any structure recited in the claim to perform the claimed function. See Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703–04 (Fed. Cir. 1998) (using the term “means for” in a claim creates a rebuttable presumption that the drafter intended to invoke § 112, ¶ 6); Sage Prods. v. Devon Indus., Inc., 126 F.3d 1420, 1427–28 (Fed. Cir. 1997) (the presumption is not rebutted if the term “means for” is modified by functional language and is not modified by any structure recited in the claim to perform the claimed function); see also Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (confirming that “use of the word ‘means’ creates a presumption that § 112, ¶ 6, applies” (citing Personalized Media, 161 F.3d at 703)).” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Zond’s argument and Dr. Hartsough’s testimony, however, are predicated on the premise that the gas is fully ionized, containing no excited or metastable atom, before reaching Iwamura’s second plasma generation unit inside the chamber. That premise squarely contradicts Iwamura’s 17 disclosure. Notably, Iwamura explicitly discloses that “the first plasma generation unit preactivates the gas and the second plasma generation unit activates the gas and forms activated gas species.” Ex. 1307, 2:61–65 (emphasis added). Iwamura also describes “preactivation” to mean that “the gas is not yet fully ionized, but its excitation level is high.” Id. at 2:34–39 (“[T]he gas reaching the downstream plasma generation position maintains the ionized or near-ionized state, formed by preactivation, i.e., the gas is not yet fully ionized, but its excitation level is high, due to the upstream plasma preactivation.” (emphasis added)). Moreover, if the gas were fully ionized before reaching Iwamura’s second plasma generation unit, as Zond alleges, there would be no reason to have a second plasma generation unit, much less having a second plasma generation unit to generate a plasma inside the chamber. On the contrary, Iwamura explicitly states that “a second plasma generation unit [is] for activating the gas to generate a plasma downstream along the flow path of the gas.” Id. at 2:59–61 (emphasis added). Iwamura further discloses that the gas is activated by the second plasma generation unit—increasing the density and excitation levels of activated gas species and generating a plasma—to improve uniformity and treatment rate. Id. at 8:4–46, Fig. 1. In fact, Dr. Hartsough in his cross-examination testimony acknowledges, and Dr. Kortshagen confirms, that the gas reaching Iwamura’s second plasma generation unit includes excited and metastable atoms. Ex. 1317, 42:9–43:17, 74:2–76:4; Ex. 1315 ¶¶ 25–33, 89. Zond’s contention that a plasma does not include a volume of excited or metastable atoms also is inconsistent with the ordinary and customary” slip op. at 17

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “A prior-art reference is considered to be analogous if it is either: (1) from the same field of endeavor, regardless of the problem addressed; or (2) reasonably pertinent to the particular problem with which the inventor is concerned, regardless of the field of endeavor. See In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992). “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Id. at 659. In that regard, “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.” KSR, 550 U.S. at 417. Here, the field of plasma generation is not limited to the particular type of plasma chamber disclosed in the ’779 patent, as Zond suggests. On the contrary, the prior art of record shows that one of ordinary skill in the art at the time of the invention would have recognized that plasma treatment systems and gas lasers are from the same field of endeavor, and that effects observed in one may be applicable to the other, as explained by Kudryavtsev. Pet. 48; Ex. 1304, 30, 34; Ex. 1302 ¶ 138. In fact, in Pinsley and Angelbeck, the gas is excited in a region between a pair of anode and cathode electrodes to generate a plasma, similar to the ’779 patent. Ex. 1305, 2:31–36; Ex. 1306, 2:45–56; Ex. 1301, 6:21–23 (“Numerous other cathode and anode configurations known in the art can be used with the plasma generator of the present invention.”), Figs. 1–2. In short, both 40 Pinsley and Angelbeck are analogous art because they are within the same field of endeavor as the ’779 patent—namely, plasma generation. Additionally, Pinsley and Angelbeck are reasonably pertinent to the problem addressed by the ’779 patent, at least with respect to generating a magnetic field and using the magnetic field to excite gas atoms efficiently. As we discussed previously, both Pinsley and Angelbeck disclose the application of a magnetic field to improve the efficiency of exciting atoms. Ex. 1305, 2:43–48, Ex. 1306, 1:36–41. Therefore, one with ordinary skill in the art would have looked to the teachings of Pinsley and Angelbeck for how to increase the efficiency of exciting atoms for generating a plasma.” slip op. at 40

  Patent outcomesUS 6,805,779 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,805,779
• Globalfoundries U.S., Inc. / Globalfoundries Dresden Module One LLC & Co. KG et al. v. Zond, LLCAll claims unpatentable
  PTAB · Nov 3, 2015 · IPR2014-01073 · APJ Joni Y Chang · IPR · Final written decision

  Claims 1–4, 10–15, 17, 18, 24–27, and 29 are unpatentable as obvious over Iwamura, Angelbeck, and Pinsley.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “Ex. 1017, 42:9–43:17. We observe that the ’779 patent uses the term “plasma” in accordance with its ordinary and customary meaning as would be understood by one with ordinary skill in the art. For instance, the Specification of the ’779 patent states that “[a] plasma is a collection of charged particles that move in random directions,” and further explains that a plasma also includes excited and metastable atoms. Ex. 1001, 1:7–8; 8:43–48. We are cognizant that, in an ideal situation, a plasma can be fully ionized, which contains only charged particles (ions and electrons). Ex. 1017, 42:9–43:17. Based on the evidence before us, we construe the claim term “plasma” as “a collection of ions, electrons, ground state atoms, excited atoms, and metastable atoms,” consistent with the term’s ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the Specification of the ’779 patent.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “Given the evidence before us, we agree with Dr. Kortshagen that one with ordinary skill in the art would have been motivated, in view of Angelbeck and Pinsley, to use a magnet with Iwamura’s pre-excitation unit and first plasma generation unit—which are located proximate to the ground state atoms source (gas supply 20)—for generating a magnetic field to substantially trap electrons, in order to increase the efficiency of excitation of ground state atoms. Ex. 1002 ¶ 129. We credit Dr. Kortshagen’s testimony, as it is consistent with the disclosures of Angelbeck and Pinsley, and other prior art of record. Upon consideration of the parties’ contentions and the evidence in this entire record, we determine that GlobalFoundries has demonstrated that combining the technical disclosures of Iwamura, Angelbeck, and Pinsley is merely a predictable use of prior art elements according to their established functions—an obvious improvement. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is 35 beyond his or her skill.”). Therefore, GlobalFoundries has provided an articulated reason with rational underpinnings for modifying Iwamura in view of Angelbeck and Pinsley. Conclusion” slip op. at 35

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “Zond’s argument and expert testimony, however, improperly rest on the notion that all of the electrons, in Angelbeck, are lost to the wall. On the contrary, Angelbeck specifically indicates that “[t]he current-excited discharge passed through the gas within tube 10 creates a plasma in which the atoms are ionized and the electrons are freed.” Ex. 1006, 2:54–56 (emphasis added). More importantly, as discussed above, Angelbeck teaches that a magnetic field creates a high density of excited atoms and increases the efficiency of excitation. Id. at 1:36–41, 2:18–20, 2:29–33. Given the evidence before us, we do not discern that Angelbeck criticizes, discredits, or otherwise discourages investigation into using magnetic field to substantially trap electrons. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (noting that a reference does not teach away if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed); In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971) (“Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure of non-preferred embodiments.”). Therefore, a person of ordinary skill would not have been dissuaded from combining Iwamura with Angelbeck and Pinsley.” slip op. at 33

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “the contrary, the prior art of record shows that one of ordinary skill in the art at the time of the invention would have recognized that plasma treatment systems and gas lasers are from the same field of endeavor, and that effects observed in one may be applicable to the other, as explained by Kudryavtsev. Pet. 50; Ex. 1004, 30, 34; Ex. 1002 ¶ 130. In fact, in Pinsley and Angelbeck, the gas is excited in a region between a pair of anode and cathode electrodes to generate a plasma, similar to the ’779 patent. Ex. 1005, 2:31–36; Ex. 1006, 2:45–56; Ex. 1001, 6:21–23 (“Numerous other cathode and anode configurations known in the art can be used with the plasma generator of the present invention.”), Figs. 1–2. In short, both Pinsley and Angelbeck are analogous art because they are within the same field of endeavor as the ’779 patent—namely, plasma generation. Additionally, Pinsley and Angelbeck are reasonably pertinent to the problem addressed by the ’779 patent, at least with respect to generating a magnetic field and using the magnetic field to excite gas atoms efficiently. As we discussed previously, both Pinsley and Angelbeck disclose the application of a magnetic field to improve the efficiency of exciting atoms. Ex. 1005, 2:43–48, Ex. 1006, 1:36–41. Therefore, one with ordinary skill in the art would have looked to the teachings of Pinsley and Angelbeck for how to increase the efficiency of exciting gas atoms for generating a plasma.” slip op. at 32

  Patent outcomesUS 6,805,779 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,805,779
• Globalfoundries U.S., Inc. / Globalfoundries Dresden Module One LLC & Co. KG et al. v. Zond, LLCAll claims unpatentable
  PTAB · Nov 3, 2015 · IPR2014-01076 · APJ Joni Y Chang · IPR · Final written decision

  Claims 43 is unpatentable as anticipated by Iwamura; claims 5, 6, 8, 19, 22, and 23 are unpatentable as obvious over Iwamura, Angelbeck, and Pinsley.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “Zond’s expert, Dr. Larry D. Hartsough, also testifies that, in the context of the ’779 patent, one with ordinary skill in the art at the time of the invention would have understood that a plasma includes charged particles (ions and electrons), as well as neutral atoms—namely, ground state atoms, excited atoms, and metastable atoms—because not every atom is ionized. Ex. 1117, 42:9–43:17. We observe that the ’779 patent uses the term “plasma” in accordance with its ordinary and customary meaning as would be understood by one with ordinary skill in the art. For instance, the Specification of the ’779 patent states that “[a] plasma is a collection of charged particles that move in random directions,” and further explains that a plasma also includes excited and metastable atoms. Ex. 1101, 1:7–8, 8:43–48. We are cognizant that, in an ideal situation, a plasma can be fully ionized, which contains only charged particles (ions and electrons). Ex. 1117, 42:9–43:17. Based on the evidence before us, we construe the claim term “plasma” as “a collection of ions, electrons, ground state atoms, excited atoms, and 9 metastable atoms,” consistent with the term’s ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the Specification of the ’779 patent.” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Zond’s arguments and Dr. Hartsough’s testimony, however, are predicated on the premise that the gas is fully ionized containing no excited or metastable atoms, before reaching Iwamura’s second plasma generation unit inside the chamber. That premise squarely contradicts Iwamura’s disclosure. Notably, Iwamura explicitly discloses that “the first plasma generation unit preactivates the gas and the second plasma generation unit activates the gas and forms activated gas species.” Ex. 1107, 2:61–65 (emphasis added). Iwamura also describes “preactivation” to mean that “the gas is not yet fully ionized, but its excitation level is high.” Id. at 2:34–39 (“[T]he gas reaching the downstream plasma generation position maintains the ionized or near-ionized state, formed by preactivation, i.e., the gas is not yet fully ionized, but its excitation level is high, due to the upstream plasma preactivation.”) (emphasis added). Moreover, if the gas were fully ionized before reaching Iwamura’s second plasma generation unit, as Zond alleges, there would be no reason to 15 have a second plasma generation unit, much less having a second plasma generation unit to generate a plasma inside the chamber. On the contrary, Iwamura explicitly states that “a second plasma generation unit [is] for activating the gas to generate a plasma downstream along the flow path of the gas.” Id. at 2:59–61 (emphasis added). Iwamura further discloses that the gas is activated by the second plasma generation unit—increasing the density and excitation levels of activated gas species and generating a plasma—to improve uniformity and treatment rate. Id. at 8:4–46, Fig. 1. In fact, Dr. Hartsough in his cross-examination testimony acknowledges, and Dr. Kortshagen confirms, that the gas reaching Iwamura’s second plasma generation unit includes excited and metastable atoms. Ex. 1117, 42:9–43:17, 74:2–76:4; Ex. 1115 ¶¶ 25–33, 89. Zond’s contention that a plasma does not include a volume of excited atoms also is inconsistent with the ordinary and customary meaning of the term “plasma”—namely, “a collection of ions, electrons, ground state atoms, excited atoms, and metastable atoms.” As discussed above, both Dr. Kortshagen and Dr. Hartsough agree with that definition. Ex. 1102 ¶¶ 22–28; Ex. 1117, 42:9–43:17. Furthermore, the Specification of the ’779 patent discloses that a plasma includes charged particles as well as neutral excited and metastable atoms. Ex. 1101, 8:43–48. More importantly, as the Specification explains, a volume of excited or metastable atoms is generated when “a discharge is created in a discharge region” between a pair of electrodes, similar to Iwamura’s first plasma generation unit, energizing and ionizing a portion of ground state atoms. Id. at 14:4–14:23 (“Some of the ground state atoms 208 are directly ionized, which releases ions 424 and 16 electrons 426 into the stream of metastable atoms 218. . . . The metastable atoms 218, the free ions 424 and electrons 426 then pass through the output 423 of the metastable atom source 402.”) (emphasis added). Therefore, even in the embodiment in which Iwamura’s first generation unit generates a plasma, one with ordinary skill in the art would have recognized that the plasma reaching Iwamura’s second generation unit includes a volume of excited and metastable atoms. Given the evidence in this record, we determine that GlobalFoundries has demonstrated, by a preponderance of the evidence, that Iwamura discloses an energy source that raises “an energy of excited atoms in the volume of excited atoms so that at least a portion of the excited atoms in the volume of excited is ionized, thereby generating a plasma with a multi-step ionization process,” as recited in claim 43. Excited atom source” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Given the evidence before us, we agree with Dr. Kortshagen that one with ordinary skill in the art would have been motivated, in view of Angelbeck and Pinsley, to use a magnet with Iwamura’s pre-excitation unit and first plasma generation unit—which are located proximate to the ground state atoms source (gas supply 20)—for generating a magnetic field to substantially trap electrons, in order to increase the efficiency of excitation of ground state atoms. Ex. 1102 ¶¶ 142, 159. We credit Dr. Kortshagen’s testimony, as it is consistent with the disclosures of Angelbeck and Pinsley, and other prior art of record. Upon consideration of the parties’ contentions and the evidence in this entire record, we determine that GlobalFoundries has demonstrated that combining the technical disclosures of Iwamura, Angelbeck, and Pinsley is merely a predicable use of prior art elements according to their established functions—an obvious improvement. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). Therefore, GlobalFoundries has provided an articulated reason with rational underpinnings for modifying Iwamura in view of Angelbeck and Pinsley.” slip op. at 39

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “A prior-art reference is considered to be analogous if it is either: (1) from the same field of endeavor, regardless of the problem addressed; or (2) reasonably pertinent to the particular problem with which the inventor is concerned, regardless of the field of endeavor. See In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992). “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Id. at 659. In that regard, “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.” KSR, 550 U.S. at 417. Here, the field of plasma generation is not limited to the particular type of plasma chamber disclosed in the ’779 patent, as Zond suggests. On the contrary, the prior art of record shows that one of ordinary skill in the art at the time of the invention would have recognized that plasma treatment systems and gas lasers are from the same field of endeavor, and that effects observed in one may be applicable to the other, as explained by 35 Kudryavtsev. Pet. 55; Ex. 1104, 30, 34; Ex. 1102 ¶ 143. In fact, in Pinsley and Angelbeck, the gas is excited in a region between a pair of anode and cathode electrodes to generate a plasma, similar to the ’779 patent. Ex. 1105, 2:31–36; Ex. 1106, 2:45–56; Ex. 1101, 6:21–23 (“Numerous other cathode and anode configurations known in the art can be used with the plasma generator of the present invention.”), Figs. 1–2. In short, both Pinsley and Angelbeck are analogous art because they are within the same field of endeavor as the ’779 patent—namely, plasma generation. Additionally, Pinsley and Angelbeck are reasonably pertinent to the problem addressed by the ’779 patent, at least with respect to generating a magnetic field and using the magnetic field to excite gas atoms efficiently. As we discussed previously, both Pinsley and Angelbeck disclose the application of a magnetic field to improve the efficiency of exciting atoms. Ex. 1105, 2:43–48, Ex. 1106, 1:36–41. Therefore, one with ordinary skill in the art would have looked to the teachings of Pinsley and Angelbeck for how to increase the efficiency of exciting gas atoms for generating a plasma.” slip op. at 35

  Patent outcomesUS 6,805,779 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,805,779
• Fujitsu Semiconductor Limited / Fujitsu Semiconductor America, Inc. et al. v. Zond, LLCAll claims unpatentable
  PTAB · Oct 2, 2015 · IPR2014-00805 · APJ Jennifer Meyer Chagnon · IPR · Final written decision

  Claims 3–7, 18–20, 31, 32, 36, 40, 41, 44, and 45 are unpatentable under § 103 over Wang with Kawamata, Wang with Lantsman, or Wang with Lantsman and Kawamata.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “Subsequent to institution, we granted revised Motions for Joinder filed by other Petitioners listed in the Caption above, joining Cases IPR2014-00851, IPR2014-00990, and IPR2014-01069 with the instant trial (see Papers 12, 13), and also granted a Joint Motion to Terminate with respect to TSMC (Paper 30).5 Patent Owner filed a Patent Owner Response (Paper 27, “PO Resp.”), along with a Declaration of Larry D. Hartsough, Ph.D. (Ex. 2015) to support its positions. Petitioner filed a Reply (Paper 41, “Reply”) to the Patent Owner Response, along with a Declaration of Lawrence J. Overzet, Ph.D (Ex. 1126). An oral hearing6 was held on June 8, 2015. A transcript of the hearing is included in the record. Paper 49 (“Tr.”).” slip op. at 3

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “Based on the evidence before us, we determine that “creates” would be understood by one of ordinary skill in the art to mean “to bring into existence,” consistent with the use of the word in the Specification and the plain and ordinary meaning thereof. See Create Definition, Merriam- Webster’s Collegiate Dictionary 271 (10th edition 2000). Furthermore, the ’421 patent does not explicitly define “creates a weakly-ionized plasma.” While Patent Owner provides examples described in the Specification (PO Resp. 18), we will not import the suggested “ignition” limitation into the claim. See Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998); see also, SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim 14 language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.”). As such, we interpret the term “creates a weakly-ionized plasma” as “brings into existence a weakly-ionized plasma,” and do not limit the claim to a circumstance that the gas is ignited from a state in which there is no existing plasma, as proposed by Patent Owner.” slip op. at 14

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Given the evidence before us in the entire record, for the reasons discussed above, we determine that Petitioner has demonstrated, by a preponderance of evidence, that Wang discloses a “power supply that generates a voltage pulse between the anode and the cathode assembly that 25 creates a weakly-ionized plasma and then a strongly-ionized plasma from the weakly-ionized plasma.”” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “Petitioner asserts “[o]ne of ordinary skill would have been motivated to incorporate the teachings of Kawamata in Wang, e.g., using input power to control the density of the plasma and thereby control the temperature of the sputtering material so as to control the sputtering yield,” because “[b]oth Wang and Kawamata provide ways to enhance the sputtering rate” and it “would have been a combination of old elements in which each element behaved as expected.” Pet. 40–41 (citing Ex. 1102 ¶¶ 118–120). Beyond the arguments provided with respect to the independent claims, which we do not find persuasive for the reasons discussed above, Patent Owner does not provide separate arguments or otherwise address claims 3–5, 18–20, 36, 40, and 41 in its Response. We have reviewed 32 Petitioner’s arguments and evidence regarding these dependent claims (Pet. 39–42, 24–29; Ex. 1102 ¶¶ 76–79, 83, 85–86, 89, 116–120, 122, 124– 125; Ex. 1109, 2:6–9, 3:18–20, 3:34–38, 5:66–6:3, 7:36–40, 7:53–58, Figs. 1, 2; Ex. 1104, 4:27–29; Ex. 1101, 2:9–10, 9:57–61), and, given the evidence in the record before us, we determine that Petitioner has demonstrated, by a preponderance of evidence, that the combination of Wang and Kawamata renders obvious each of claims 3–5, 18–20, 36, 40, and 41.” slip op. at 32

  Patent outcomesUS 7,811,421 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,811,421
• Fujitsu Semiconductor Limited / Fujitsu Semiconductor America, Inc. et al. v. Zond, LLCAll claims unpatentable
  PTAB · Oct 2, 2015 · IPR2014-00802 · APJ Jennifer Meyer Chagnon · IPR · Final written decision

  Claims 9, 14, 21, 26, 35, and 37 are unpatentable under § 103 over Wang with Kudryavtsev or Mozgrin Thesis.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for petitioner

    “weakly-ionized plasma” and “strongly-ionized plasma” Each of the independent claims from which the challenged claims depend recites “creat[ing] a weakly-ionized plasma and then a 6 strongly-ionized plasma from the weakly-ionized plasma.” Ex. 1201, 22:18–20, 23:14–16, 24:17–19. In our Institution Decision, we adopted Patent Owner’s proposed constructions, in light of the Specification, as the broadest reasonable interpretation of each of these claim terms. Inst. Dec. 9–11; see, e.g., Ex. 1201, 9:24–25 (“the weakly-ionized plasma 232 has a low-level of ionization”), 12:11–12 (“The strongly-ionized plasma 268 is also referred to as a high-density plasma.”). Neither party has challenged our claim constructions as to these terms. PO Resp. 16–17; Ex. 2015 ¶ 20; Reply 2; Ex. 1228 ¶¶ 26–28. Upon consideration of the complete record now before us, we discern no reason to change our claim constructions set forth in the Institution Decision with respect to these claim terms. See Inst. Dec. 9–11. Therefore, we construe, in light of the Specification, the claim term “a weakly-ionized plasma” as “a plasma with a relatively low peak density of ions,” and the claim term “a strongly-ionized plasma” as “a plasma with a relatively high peak density of ions.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageNo construction neededDecided for petitioner

    “We first address Patent Owner’s argument that the claims require no arcing during creation of the weakly-ionized plasma. Here, Patent Owner improperly attempts to import extraneous limitations into the claim by arguing repeatedly that the claims require that arcing is avoided, even on plasma ignition. See, e.g., PO Resp. 11, 14, 16, 18, 28; Tr. 59:22–62:7. Patent Owner’s interpretation, however, is not consistent with the language of the claims, particularly when considered in view of the Specification. The plain claim language of the independent claims, which recite “creat[ing] a weakly-ionized plasma and then a strongly-ionized plasma without an occurrence of arcing,” supports a claim construction where the claim phrase “without an occurrence of arcing” modifies only the portion of the claim reciting the transition to a strongly-ionized plasma from a weakly-ionized plasma. Further, as seen in the quoted portions of the Specification set forth above, the Specification of the ’421 patent describes the weakly-ionized plasma as substantially eliminating the setup of a breakdown condition, and thus arcing, when the high-power pulses are applied across the weakly-ionized plasma to generate a strongly-ionized plasma from the weakly-ionized plasma; the Specification does not support Patent Owner’s assertion that the setup of a breakdown condition, or arcing, also be substantially eliminated when the weakly-ionized plasma itself is formed. In fact, the Specification indicates that it is the presence of the weakly-ionized plasma that provides for the ability to substantially eliminate arcing when the high-power pulses are applied. See Ex. 1201, 9:16–28, 15:66–16:5. Accordingly, we decline to construe the claims to require creation of the 9 weakly-ionized plasma without an occurrence of arcing. See In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011) (stating that the Board’s claim construction “cannot be divorced from the specification and the record evidence”); see also In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999) (stating that the Board’s claim construction “must be consistent with the one that those skilled in the art would reach”).” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “The parties’ dispute with respect to this term focuses on the application of the cited art to the claims, rather than on a particular meaning of the term itself. For this reason, we do not provide an express construction for this term. Instead, we address the parties’ arguments regarding the usage of the term “pulse” in more detail below, in the context of applying the cited art to the claims.” slip op. at 16

  • Skill levelOther

    “the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In that regard, an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see Translogic, 504 F.3d at 1259. A prima facie case of obviousness is established when the prior art itself would appear to have suggested the claimed subject matter to a person of ordinary skill in the art. In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976). The level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 17

  Patent outcomesUS 7,811,421 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,811,421
• Fujitsu Semiconductor Limited / Fujitsu Semiconductor America, Inc. et al. v. Zond, LLCAll claims unpatentable
  PTAB · Oct 2, 2015 · IPR2014-00800 · APJ Jennifer Meyer Chagnon · IPR · Final written decision

  Claims 1, 2, 8, 10–13, 16, 17, 22–25, 28–30, 33, 34, 39, 42, 43, and 46–48 are anticipated by Wang; claims 15, 27, and 38 are obvious over Wang and Mozgrin.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “Initially, we note Patent Owner has not identified, nor do we find, any portion of the Specification of the ’421 patent that explicitly defines the term “creates.” The ’421 patent describes choosing characteristics of a voltage pulse such that an electric field develops that creates a weakly-ionized plasma. Ex. 1001, 11:14–20. However, the ’421 patent also uses the term “creates” in various other contexts. For example, the ’421 patent describes strongly-ionized plasma tends to diffuse homogenously in region 264, which “creates a more homogeneous plasma volume,” and the high power pulse “creates strongly-ionized plasma.” Id. at 12:16–19, 20:22–24. The ’421 patent further describes an initial voltage that “creates a plasma discharge voltage.” Id. at 8:53–56.” slip op. at 15

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We now address Patent Owner’s focus on the distinction between reducing versus eliminating. See PO Resp. 33. Patent Owner does not explain adequately why one with ordinary skill in the plasma art would have 10 interpreted the claim term “without developing an electrical breakdown condition,” in light of the Specification, to require the transformation of the weakly-ionized plasma to a strongly-ionized plasma with a guarantee of eliminating all possibility of arcing. See In re NTP, Inc., 654 F.3d at 1288; In re Cortright, 165 F.3d at 1358. One with ordinary skill in the art would have recognized that electrical arcing in a real-world plasma sputtering apparatus occurs naturally under certain processing conditions. In this regard, Dr. Overzet testifies that “[a] person of skill in the art would recognize that arcing is undesirable and it is always the goal to completely prevent arcing from occurring. However, it is not possible to construct a perfect system and there is always a possibility that a system will arc.” Ex. 1027 ¶ 51 (emphases added). We credit the testimony of Dr. Overzet as it is consistent with the Specification of the ’421 patent, which discloses only that the possibility of arcing is “substantially eliminated” or “greatly reduced.” Ex. 1001, 9:16–28, 15:66–16:5.” slip op. at 10

  • Skill levelOther

    “A claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). 17 In that regard, an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see Translogic, 504 F.3d at 1259. A prima facie case of obviousness is established when the prior art itself would appear to have suggested the claimed subject matter to a person of ordinary skill in the art. In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976). The level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “In its Response, Patent Owner argues that Wang does not disclose a single power supply that generates a voltage pulse that creates a weakly-ionized plasma. We address each emphasized limitation in turn. Regarding Patent Owner’s arguments that Wang does not disclose “creating” a weakly-ionized plasma, we note these arguments are based on an incorrect construction of “create”—one that improperly imports an “ignition” requirement into the claim—as discussed above. See supra Section II.A. We are persuaded that Petitioner has shown sufficiently that Wang discloses bringing a weakly-ionized plasma into existence, which meets the claim language based on the broadest reasonable interpretation thereof. See, e.g., Ex. 1004, 7:17–19 (“The background [power] level PB is chosen to exceed the minimum power necessary to support a plasma in the chamber at the operational pressure.”); id. at Fig. 6. Regarding Patent Owner’s assertion that the voltage pulse must be generated by a single power supply (PO Resp. 7–13, 26–27, 32–38), we are not persuaded that the claims are so limited. We agree with Petitioner that nothing in the claim language precludes a DC power supply from 23 contributing to the claimed pulse. See Reply 14. Dr. Overzet testifies that the “collection of components shown in Fig. 7 of Wang [e.g., those circled in red in the annotated figure provided below,] fall within the broadest reasonable interpretation of a ‘power supply’ because they work together to provide power to a target.” Reply 10 n.2 (citing Ex. 1027 ¶ 58). The annotated version of Figure 7 of Wang to which Dr. Overzet refers is reproduced below (Ex. 1027 ¶ 57):” slip op. at 23

  Patent outcomesUS 7,811,421 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,811,421
• The Gillette Company / Fujitsu Semiconductor Limited et al. v. Zond, LLCAll claims unpatentable
  PTAB · Oct 1, 2015 · IPR2014-00580 · APJ Joni Y Chang · IPR · Final written decision

  Claims 1–20 and 34–39 are unpatentable under § 103(a) over the five instituted grounds; the majority finds the Mozgrin Thesis publicly accessible, with a partial dissent on claim 2.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “Subsequent to institution, we granted the Motion for Joinder filed by Taiwan Semiconductor Manufacturing Company, Ltd., TSMC North America Corp. (collectively, “TSMC”), Fujitsu Semiconductor Limited, and Fujitsu Semiconductor America, Inc. (collectively, “Fujitsu”), joining Case IPR2014-01479 with the instant trial (Paper 20), and also granted a Joint Motion to Terminate with respect to TSMC (Paper 37).2 Zond filed a Response (Paper 32 (“PO Resp.”)), and Gillette filed a Reply (Paper 39 (“Reply”)). Oral hearing3 was held on June 16, 2015, and a transcript of the hearing was entered into the record. Paper 47 (“Tr.”).” slip op. at 2

  • Skill levelOther

    “B. Principles of Law A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In that regard, an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418; Translogic, 504 F.3d at 1262. The level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015) (“Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA,”6 and “the standard was properly adopted by PTO regulation.”). Claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor may rebut that presumption by providing a” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “We are not persuaded by Zond’s arguments, as they narrowly focus on Mozgrin’s regime 3, and fail to consider Mozgrin’s regime 2 that is dedicated to sputtering. It is well-settled that, when evaluating claims for obviousness, “the prior art as a whole must be considered.” In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986). As Gillette points out (Pet. 13–14), Mozgrin explicitly states that, in regime 2, the voltage pulse that generates a strongly-ionized plasma from the weakly-ionized plasma is appropriate for sputtering. Ex. 1002, 402, 406, 409 (“The implementation of the high-current magnetron discharge (regime 2) in sputtering . . . provides an enhancement in . . . plasma density (exceeding 2 x 1013 cm-3).”), Figs. 1, 3). Mozgrin also discloses specific process parameter ranges that are more efficient for sputtering in regime 2. Id. Therefore, contrary to Zond’s assertion that Mozgrin’s voltage pulse creates a direct transition to regime 3, one of ordinary skill in the art reading Mozgrin would have been able to select the pulse characteristics and parameter ranges to generate a strongly-ionized plasma in regime 2 that is dedicated to sputtering. Upon consideration of Mozgrin and Fortov, as a whole, we do not share Zond’s view that there are contradictory teachings between Mozgrin and Fortov that would dissuade one of ordinary skill in the art from combining the prior art teachings to achieve Fortov’s non-linear increase in sputtering yield.” slip op. at 25

  Patent outcomesUS 6,896,773 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,896,773

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.