• 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
• Fujitsu Semiconductor Limited / Fujitsu Semiconductor America, Inc. et al. v. Zond, LLCAll claims unpatentable
  PTAB · Sep 28, 2015 · IPR2014-01057 · APJ Kevin F Turner · IPR · Final written decision

  Claims 2, 11, 13, 14, and 16 are unpatentable under § 103(a) over the asserted combinations of Wang, Lantsman, and the applicable additional reference.

  RulingsFinal written decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “North America Corporation (collectively, “TSMC”) filed a Petition requesting an inter partes review of claims 2, 11, 13, 14, and 16 of U.S. Patent No. 6,853,142 B2 (Ex. 1101, “the ’142 Patent”). Paper 2 (“Pet.”). Patent Owner Zond, LLC (“Zond”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). We instituted the instant trial on October 20, 2014, pursuant to 35 U.S.C. § 314. Paper 9 (“Dec.”).” slip op. at 2

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

    “Subsequent to institution, we granted the revised Motions for Joinder filed by other Petitioners (collectively, “GlobalFoundries”) listed in the Caption above, joining Cases IPR2014-00863, IPR2014-01013, and IPR2014-01057 with the instant trial (Papers 12–14), and also granted a Joint Motion to Terminate with respect to TSMC (Paper 32). Zond filed a Response (Paper 26 (“PO Resp.”)), and GlobalFoundries filed a Reply (Paper 39 (“Reply”)). Oral hearing2 was held on June 12, 2015, and a transcript of the hearing was entered into the record. Paper 46 (“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 1259. 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). We analyze the asserted grounds of unpatentability in accordance with the above-stated principles.” slip op. at 7

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

    “plasma to generate a strongly-ionized plasma,” with independent claim 10 reciting a similar limitation. All of the challenged claims depend from claim 1 or 10. During the pre-trial stage of this proceeding, the parties submitted their constructions for the claim terms “a weakly-ionized plasma” and “a strongly-ionized plasma.” Pet. 14–15; Prelim. Resp. 20–22. In our Decision on Institution, we adopted Zond’s proposed constructions, in light of the Specification, as the broadest reasonable interpretation. Dec. 8–10. Upon review of the parties’ explanations and supporting evidence before us, we discern no reason to modify our claim constructions set forth in the Decision on Institution with respect to these claim terms. Id. Therefore, for purposes of this Final Written Decision, 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,” the claim term “a strongly-ionized plasma” as “a plasma with a relatively high peak density of ions.”” slip op. at 7

  Patent outcomesUS 6,853,142 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,853,142
• Fujitsu Semiconductor Limited / Fujitsu Semiconductor America, Inc. et al. v. Zond, LLCAll claims unpatentable
  PTAB · Sep 28, 2015 · IPR2014-00863 · APJ Kevin F Turner · IPR · Final written decision

  Claims 2, 11, 13, 14, and 16 are unpatentable under § 103(a) over the listed combinations of Wang, Lantsman, and the respective additional references.

  RulingsFinal written decision

  • ExcludeOther

    “Zond had the opportunity, during this trial, to object to evidence and file a motion to exclude the evidence submitted by GlobalFoundries. Zond, however, did not object under 37 C.F.R. § 42.64(b) to the admissibility of the catalog entry or the Mozgrin Thesis. Notably, Zond does not challenge the authenticity of these documents, nor allege that they constitute inadmissible hearsay. Therefore, the information set forth in the catalog entry can be relied upon by GlobalFoundries as evidence supporting its contention that Mozgrin Thesis was sufficiently accessible to the public before the critical date and it is printed publication within the meaning of § 102. Furthermore, Zond does not provide sufficient explanation or credible evidence to rebut the information disclosed in the Russian State Library’s catalog entry, including the 1994 publication date. For instance, Zond does not explain why a library, such as the Russian State Library here, would take more than seven years to catalog and index a thesis.” slip op. at 28

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Dr. Overzet testifies that Kudryavtsev’s model on plasma behavior is not intended to be limited to a particular type of plasma apparatus. Ex. 1129 ¶ 61. Indeed, Kudryavtsev discloses a study of the ionization relaxation in plasma when the external electric field suddenly increases. Ex. 1106, 30. Specifically, Kudryavtsev discloses that “the electron density increases explosively in time due to accumulation of atoms in the lowest excited states.” Id. at Abs. (emphasis added). Kudryavtsev also describes the experimental results that confirm the model. Id. at 32–34. Moreover, Kudryavtsev expressly explains that “the effects studied in this work are characteristic of ionization whenever a field is suddenly applied to a weakly ionized gas.” Id. at 34 (emphasis added). Dr. Overzet also testifies that a person having ordinary skill in the art “would have looked to Kudryavtsev to understand how plasma would react to a quickly applied voltage pulse, and how to achieve an explosive increase in electron density” when generating a strongly-ionized plasma for improving sputtering and manufacturing processing. Ex. 1129 ¶ 62. Dr. Overzet further explains that such an artisan would have known how to apply Kudryavtsev’s model to Wang’s system by making any necessary changes to accommodate the differences through routine experimentation. Id. ¶¶ 63–65. On this record, we credit Dr. Overzet’s testimony (id. ¶¶ 61– 65) because his explanations are consistent with the prior art of record. As well, Dr. Overzet testifies, Lantsman states that its techniques can be applied to any plasma process, including DC magnetron sputtering, where Wang is directed to DC magnetron sputtering. Ex. 1129 ¶¶ 66–67 (citing Ex. 1104, 6:14–17). Additionally, Dr. Overzet testifies that the different processing conditions in Wang and Lantsman are routine variables that ordinarily skilled artisans would understand need to be changed to accommodate different systems and processing conditions. Id. ¶ 68. In addition, Dr. Overzet points out that both Lantsman and Wang “teach two stage plasma systems.” Id. ¶ 69. Indeed, Lantsman discloses both “limited” and “substantial” plasma stages (Ex. 1104, 2:48–51, 4:58–61, 5:6), and Wang discloses plasma states that vary with the application of pulses (Ex. 1105, 7:13–39). As noted above, Wang discloses background power PB of 1 kW (falling within the range of 0.01–100 kW, as disclosed in the ’142 Patent, for generating a weakly-ionized plasma), and pulse peak power PP of 1 MW (falling within the range of 1 kW–10 MW, as disclosed in the ’142 Patent, for generating a strongly-ionized plasma). Ex. 1105, 7:19–25; Ex. 1101, 11:34–38, 12:1–8, Fig. 5. On this record, we credit Dr. Overzet’s testimony (Ex. 1129 ¶¶ 66–69) because his explanations are consistent with the prior art of record.” slip op. at 18

  • Skill levelOther

    “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 1259. 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). We analyze the asserted grounds of unpatentability in accordance with the above-stated principles.” slip op. at 7

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

    “plasma to generate a strongly-ionized plasma,” with independent claim 10 reciting a similar limitation. All of the challenged claims depend from claim 1 or 10. During the pre-trial stage of this proceeding, the parties submitted their constructions for the claim terms “a weakly-ionized plasma” and “a strongly-ionized plasma.” Pet. 14–15; Prelim. Resp. 20–22. In our Decision on Institution, we adopted Zond’s proposed constructions, in light of the Specification, as the broadest reasonable interpretation. Dec. 8–10. Upon review of the parties’ explanations and supporting evidence before us, we discern no reason to modify our claim constructions set forth in the Decision on Institution with respect to these claim terms. Id. Therefore, for purposes of this Final Written Decision, 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,” the claim term “a strongly-ionized plasma” as “a plasma with a relatively high peak density of ions.”” slip op. at 7

  Patent outcomesUS 6,853,142 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,853,142
• Fujitsu Semiconductor Limited / Fujitsu Semiconductor America, Inc. et al. v. Zond, LLCAll claims unpatentable
  PTAB · Sep 28, 2015 · IPR2014-01013 · APJ Kevin F Turner · IPR · Final written decision

  Claims 2, 11, 13, 14, and 16 are unpatentable under § 103(a) over the asserted combinations of Wang, Lantsman, and the respective additional references.

  RulingsFinal written decision

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

    “We are not persuaded by Zond’s argument that Lantsman’s, Wang’s, and Kudryavtsev’s apparatuses would have been viewed as significantly different, or that one with ordinary skill in the art would not have had a reasonable expectation of success in combining the teachings. Obviousness does not require absolute predictability, only a reasonable expectation that the beneficial result will be achieved. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). “It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012); In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (noting that the criterion for obviousness is not whether the references can be combined physically, but whether the claimed invention is rendered obvious by the teachings of the prior art as a whole). In that regard, one with ordinary skill in the art is not compelled to follow blindly the teaching of one prior art reference over the other without the exercise of independent judgment. Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984); see also KSR, 550 U.S. at 420–21 (stating that a person with ordinary skill in the art is “a person of ordinary creativity, not an automaton,” and “in many cases . . . will be able to fit the teachings of multiple patents together like pieces of a puzzle”). Dr. Overzet testifies that Kudryavtsev’s model on plasma behavior is not intended to be limited to a particular type of plasma apparatus. Ex. 1129 ¶ 61. Indeed, Kudryavtsev discloses a study of the ionization relaxation in plasma when the external electric field suddenly increases. Ex. 1106, 30. Specifically, Kudryavtsev discloses that “the electron density increases explosively in time due to accumulation of atoms in the lowest excited states.” Id. at Abs. (emphasis added). Kudryavtsev also describes the experimental results that confirm the model. Id. at 32–34. Moreover, Kudryavtsev expressly explains that “the effects studied in this work are characteristic of ionization whenever a field is suddenly applied to a weakly ionized gas.” Id. at 34 (emphasis added). Dr. Overzet also testifies that a person having ordinary skill in the art “would have looked to Kudryavtsev to understand how plasma would react to a quickly applied voltage pulse, and how to achieve an explosive increase in electron density” when generating a strongly-ionized plasma for improving sputtering and manufacturing processing. Ex. 1129 ¶ 62. Dr. Overzet further explains that such an artisan would have known how to apply Kudryavtsev’s model to Wang’s system by making any necessary changes to accommodate the differences through routine experimentation. Id. ¶¶ 63–65. On this record, we credit Dr. Overzet’s testimony (id. ¶¶ 61– 65) because his explanations are consistent with the prior art of record. As well, Dr. Overzet testifies, Lantsman states that its techniques can be applied to any plasma process, including DC magnetron sputtering, where Wang is directed to DC magnetron sputtering. Ex. 1129 ¶¶ 66–67 (citing Ex. 1104, 6:14–17). Additionally, Dr. Overzet testifies that the different processing conditions in Wang and Lantsman are routine variables that ordinarily skilled artisans would understand need to be changed to accommodate different systems and processing conditions. Id. ¶ 68. In addition, Dr. Overzet points out that both Lantsman and Wang “teach two stage plasma systems.” Id. ¶ 69. Indeed, Lantsman discloses both “limited” and “substantial” plasma stages (Ex. 1104, 2:48–51, 4:58–61, 5:6), and Wang discloses plasma states that vary with the application of pulses (Ex. 1105, 7:13–39). As noted above, Wang discloses background power PB of 1 kW (falling within the range of 0.01–100 kW, as disclosed in the ’142 Patent, for generating a weakly-ionized plasma), and pulse peak power PP of 1 MW (falling within the range of 1 kW–10 MW, as disclosed in the ’142 Patent, for generating a strongly-ionized plasma). Ex. 1105, 7:19–25; Ex. 1101, 11:34–38, 12:1–8, Fig. 5. On this record, we credit Dr. Overzet’s testimony (Ex. 1129 ¶¶ 66–69) because his explanations are consistent with the prior art of record. For the foregoing reasons, we are persuaded that a preponderance of” slip op. at 17

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “prior art under 35 U.S.C. § 102(b)5 for purposes of this Final Written Decision. The determination of whether a given reference qualifies as a prior art “printed publication” involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). “Because 5 Paragraph (b) of 35 U.S.C. § 102 was replaced with newly designated § 102(a)(1) when § 3(b)(1) of AIA took effect on September 16, 2012. Because the application that issued as the ’142 Patent was filed before that date, we refer to the pre-AIA version of § 102. there are many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). To qualify as a prior art printed publication, the reference must have been disseminated or otherwise made accessible to persons interested and ordinarily skilled in the subject matter to which the document relates prior to the critical date. Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008).” slip op. at 25

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

    “First, we note that it is not essential for Lantsman to disclose a strongly-ionized plasma because Wang discloses a strongly-ionized plasma, and the specified ground of unpatentability relies on the combination of Lantsman and Wang. Second, as GlobalFoundries notes, Dr. Hartsough concedes that “the gas will tend to diffuse throughout the whole volume,” including areas containing the high-density plasma. Reply 7–8; Ex. 1130, 87:22–88:9, 88:22–89:2, 92:18–93:7. Additionally, Dr. Overzet testifies that due to random thermal motion and the pressure gradient in the reaction chamber, Wang’s argon gas will diffuse into the plasma near the target. Ex. 1129 ¶ 77. Lastly, Dr. Hartsough acknowledges that a feed gas was commonly used to diffuse a strongly-ionized plasma (Ex. 1130, 32:18–33:5), such that ordinarily skilled artisans would have used such a process without resort to the disclosure of the ’142 Patent. Given the evidence in this record, we determine that GlobalFoundries has demonstrated, by a preponderance of evidence, that the combination of Wang and Lantsman would have suggested to one with ordinary skill in the art at the time of the invention the provision of a feed gas to a strongly-ionized plasma, to diffuse the plasma and allow for greater absorption of power, as required by claims 1 and 10, with the challenged claims dependent thereon.” slip op. at 21

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Dr. Overzet also testifies that a person having ordinary skill in the art “would have looked to Kudryavtsev to understand how plasma would react to a quickly applied voltage pulse, and how to achieve an explosive increase in electron density” when generating a strongly-ionized plasma for improving sputtering and manufacturing processing. Ex. 1129 ¶ 62. Dr. Overzet further explains that such an artisan would have known how to apply Kudryavtsev’s model to Wang’s system by making any necessary changes to accommodate the differences through routine experimentation. Id. ¶¶ 63–65. On this record, we credit Dr. Overzet’s testimony (id. ¶¶ 61– 65) because his explanations are consistent with the prior art of record. As well, Dr. Overzet testifies, Lantsman states that its techniques can be applied to any plasma process, including DC magnetron sputtering, where Wang is directed to DC magnetron sputtering. Ex. 1129 ¶¶ 66–67 (citing Ex. 1104, 6:14–17). Additionally, Dr. Overzet testifies that the different processing conditions in Wang and Lantsman are routine variables that ordinarily skilled artisans would understand need to be changed to accommodate different systems and processing conditions. Id. ¶ 68. In addition, Dr. Overzet points out that both Lantsman and Wang “teach two stage plasma systems.” Id. ¶ 69. Indeed, Lantsman discloses both “limited” and “substantial” plasma stages (Ex. 1104, 2:48–51, 4:58–61, 5:6), and Wang discloses plasma states that vary with the application of pulses (Ex. 1105, 7:13–39). As noted above, Wang discloses background power PB of 1 kW (falling within the range of 0.01–100 kW, as disclosed in the ’142 Patent, for generating a weakly-ionized plasma), and pulse peak power PP of 1 MW (falling within the range of 1 kW–10 MW, as disclosed in the ’142 Patent, for generating a strongly-ionized plasma). Ex. 1105, 7:19–25; Ex. 1101, 11:34–38, 12:1–8, Fig. 5. On this record, we credit Dr. Overzet’s testimony (Ex. 1129 ¶¶ 66–69) because his explanations are consistent with the prior art of record. For the foregoing reasons, we are persuaded that a preponderance of the evidence supports a finding that GlobalFoundries has articulated a reason with rational underpinning why one with ordinary skill in the art would have combined Wang, Lantsman, and Kudryavtsev as indicated in the Petition.” slip op. at 18

  Patent outcomesUS 6,853,142 unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,853,142
• Fujitsu Semiconductor Limited / Fujitsu Semiconductor America, Inc. et al. v. Zond, LLCAll claims unpatentable
  PTAB · Sep 25, 2015 · IPR2014-00821 · APJ Kevin F Turner · IPR · Final written decision

  Claims 2, 11, 13, 14, and 16 are unpatentable under § 103(a) over the stated combinations of Wang, Lantsman, and the applicable additional reference.

  RulingsFinal written decision

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

    “We are not persuaded by Zond’s argument that Lantsman’s, Wang’s, and Kudryavtsev’s apparatuses would have been viewed as significantly different, or that one with ordinary skill in the art would not have had a reasonable expectation of success in combining the teachings. Obviousness does not require absolute predictability, only a reasonable expectation that the beneficial result will be achieved. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). “It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012); In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (noting that the criterion for obviousness is not whether the references can be combined physically, but whether the claimed invention is rendered obvious by the teachings of the prior art as a whole). In that regard, one with ordinary skill in the art is not compelled to follow blindly the teaching of one prior art reference over the other without the exercise of independent judgment. Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984); see also KSR, 550 U.S. at 420–21 (stating that a person with ordinary skill in the art is “a person of ordinary creativity, not an automaton,” and “in many cases . . . will be able to fit the teachings of multiple patents together like pieces of a puzzle”). Dr. Overzet testifies that Kudryavtsev’s model on plasma behavior is not intended to be limited to a particular type of plasma apparatus. Ex. 1129 ¶ 61. Indeed, Kudryavtsev discloses a study of the ionization relaxation in plasma when the external electric field suddenly increases. Ex. 1106, 30. Specifically, Kudryavtsev discloses that “the electron density increases explosively in time due to accumulation of atoms in the lowest excited states.” Id. at Abs. (emphasis added). Kudryavtsev also describes the experimental results that confirm the model. Id. at 32–34. Moreover, Kudryavtsev expressly explains that “the effects studied in this work are characteristic of ionization whenever a field is suddenly applied to a weakly ionized gas.” Id. at 34 (emphasis added). Dr. Overzet also testifies that a person having ordinary skill in the art “would have looked to Kudryavtsev to understand how plasma would react to a quickly applied voltage pulse, and how to achieve an explosive increase in electron density” when generating a strongly-ionized plasma for improving sputtering and manufacturing processing. Ex. 1129 ¶ 62. Dr. Overzet further explains that such an artisan would have known how to apply Kudryavtsev’s model to Wang’s system by making any necessary changes to accommodate the differences through routine experimentation. Id. ¶¶ 63–65. On this record, we credit Dr. Overzet’s testimony (id. ¶¶ 61– 65) because his explanations are consistent with the prior art of record.” slip op. at 17

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artPrinted publication establishedDecided for petitioner

    “persuaded by GlobalFoundries’s contentions and supporting evidence. Although evidence establishing a specific date of cataloging and shelving before the critical date would have been desirable, it is not required in a public accessibility determination. See Hall, 781 F.2d at 899. Here, the critical date is November 4, 2002—the filing date of the application that issued as the ’142 Patent. Ex. 1101, at (22). The certified English-language translation of the catalog entry is reproduced below with green annotations added (Ex. 1120, 1): As depicted above, the catalog entry shows that it is an entry from the Russian State Library’s catalog of dissertations in Russian. Ex. 1120, 2. As we determined previously in the Decision on Institution (Dec. 6–7), the catalog entry clearly shows a publication date of 1994 (“Imprint Moscow 1994”), well before the critical date of November 4, 2002. Id. Zond had the opportunity, during this trial, to object to evidence and file a motion to exclude the evidence submitted by GlobalFoundries. Zond, however, did not object under 37 C.F.R. § 42.64(b) to the admissibility of the catalog entry or the Mozgrin Thesis. Notably, Zond does not challenge the authenticity of these documents, nor allege that they constitute inadmissible hearsay. Therefore, the information set forth in the catalog entry can be relied upon by GlobalFoundries as evidence supporting its contention that Mozgrin Thesis was sufficiently accessible to the public before the critical date and it is printed publication within the meaning of § 102. Furthermore, Zond does not provide sufficient explanation or credible evidence to rebut the information disclosed in the Russian State Library’s catalog entry, including the 1994 publication date. For instance, Zond does not explain why a library, such as the Russian State Library here, would take more than seven years to catalog and index a thesis.” slip op. at 27

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

    “Given the evidence in this record, we determine that GlobalFoundries has demonstrated, by a preponderance of evidence, that the combination of Wang and Lantsman would have suggested to one with ordinary skill in the art at the time of the invention the provision of a feed gas to a strongly-ionized plasma, to diffuse the plasma and allow for greater absorption of power, as required by claims 1 and 10, with the challenged claims dependent thereon.” slip op. at 21

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “First, we note that it is not essential for Lantsman to disclose a strongly-ionized plasma because Wang discloses a strongly-ionized plasma, and the specified ground of unpatentability relies on the combination of Lantsman and Wang. Second, as GlobalFoundries notes, Dr. Hartsough concedes that “the gas will tend to diffuse throughout the whole volume,” including areas containing the high-density plasma. Reply 7–8; Ex. 1130, 87:22–88:9, 88:22–89:2, 92:18–93:7. Additionally, Dr. Overzet testifies that due to random thermal motion and the pressure gradient in the reaction chamber, Wang’s argon gas will diffuse into the plasma near the target. Ex. 1129 ¶ 77. Lastly, Dr. Hartsough acknowledges that a feed gas was commonly used to diffuse a strongly-ionized plasma (Ex. 1130, 32:18–33:5), such that ordinarily skilled artisans would have used such a process without resort to the disclosure of the ’142 Patent. Given the evidence in this record, we determine that GlobalFoundries has demonstrated, by a preponderance of evidence, that the combination of Wang and Lantsman would have suggested to one with ordinary skill in the art at the time of the invention the provision of a feed gas to a strongly-ionized plasma, to diffuse the plasma and allow for greater absorption of power, as required by claims 1 and 10, with the challenged claims dependent thereon.” slip op. at 21

  Patent outcomesUS 6,853,142 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,853,142
• Globalfoundries U.S., Inc. / Globalfoundries Dresden Module One LLC & Co. KG et al. v. Zond, LLCAll claims unpatentable
  PTAB · Sep 23, 2015 · IPR2014-01099 · APJ Jennifer Meyer Chagnon · IPR · Final written decision

  Claims 1–11 and 33 are unpatentable as anticipated by Wang under 35 U.S.C. § 102.

  RulingsFinal written decision

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

    “Subsequent to institution, we granted a revised Motion for Joinder filed by The Gillette Company (“Gillette”), joining Case IPR2014-00972 2 U.S. Patent No. 6,413,382 B1, issued July 2, 2002 (Ex. 1004, “Wang”). with the instant trial (Paper 12).3 Patent Owner filed a Patent Owner Response (Paper 24, “PO Resp.”), along with a Declaration of Larry D. Hartsough, Ph.D. (Ex. 2004) to support its positions. Petitioner filed a Reply (Paper 30, “Reply”) to the Patent Owner Response, along with a supplemental Declaration of Dr. Kortshagen (Ex. 1025). An oral hearing4 was held on June 12, 2015. A transcript of the hearing is included in the record. Paper 39.” slip op. at 2

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

    “nor its expert witness, expressly challenged our claim constructions as to these terms (see, e.g., Ex. 2004 ¶ 21), Patent Owner improperly attempts to import extraneous limitations into the claim by arguing that a specific magnitude for the peak density of ions is required to disclose a strongly-ionized plasma, i.e., “equal to or greater than 1012 [cm-3]” (PO Resp. 3–4, 21). It is well settled that if a feature is not necessary to give meaning to a claim term, it would be “extraneous” and should not be read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). Patent Owner relies only on testimony from Petitioner’s declarant, Dr. Kortshagen, to support this construction requiring a specific magnitude for the peak density of ions. PO Resp. 3 (citing IPR2014-00818, Ex. 2010, 44:13–58:12). Patent Owner, however, does not direct us to where the Specification provides an explicit definition for this claim term, nor do we discern one. See Paulsen, 30 F.3d at 1480. Moreover, Patent Owner’s newly proposed construction, requiring a specific ion density range, would render at least the limitation recited in dependent claim 24 superfluous. Ex. 1001, 21:45–47 (Claim 24 states “[t]he method of claim 14 wherein the peak plasma density of the strongly-ionized plasma is greater than about 1012 cm-3.”). It is well settled that “claims are interpreted with an eye toward 7 giving effect to all terms in the claim.” Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006); see also Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions which render phrases in claims superfluous). Further, “[i]t is improper for courts to read into an independent claim a limitation explicitly set forth in another claim.” Envtl. Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 698, 699 (Fed. Cir. 1983). For the foregoing reasons, we decline to adopt Patent Owner’s newly proposed construction that requires a specific ion density. Rather, upon consideration of the parties’ explanations and supporting evidence before us, we discern no reason to change our claim constructions set forth in the Institution Decision with respect to these claim terms, which adopted Patent Owner’s originally proposed constructions. Inst. Dec. 8. 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 7

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

    “Petitioner identifies two claim elements recited in claim 33 as means-plus-function elements, invoking 35 U.S.C. § 112, ¶ 66: “means for ionizing a feed gas” and “means for supplying an electrical pulse.” Pet. 13– 15. We agree that those claim elements are written in means-plus-function form and fall under 35 U.S.C. § 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., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1427–28 (Fed. Cir. 1997) (the presumption is not rebutted if the term “means for” is 6 Section 4(c) of the Leahy-Smith America Invents Act (“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 ’716 patent has a filing date before September 16, 2012 (effective date), we will refer to the pre-AIA version of § 112. 15 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)). The first step in construing a means-plus-function claim element is to identify the recited function in the claim element. Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003). The second step is to look to the specification and identify the corresponding structure for that recited function. Id. A structure disclosed in the specification qualifies as “corresponding” structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim. B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997). “While corresponding structure need not include all things necessary to enable the claimed invention to work, it must include all structure that actually performs the recited function.” Default Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed. Cir. 2005).” slip op. at 15

  Patent outcomesUS 7,604,716 unpatentable
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 7,604,716
• EMC Corporation / Rsa Security LLC v. Secure Axcess, LLCAll claims unpatentable
  PTAB · Sep 8, 2015 · IPR2014-00475 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1–23 and 25–32 are unpatentable: some are anticipated by Arent or Tygar, and the remaining claims are obvious over the stated combinations.

  RulingsFinal written decision

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

    “As an initial matter, in accordance with the plain language of the claims and because the ’191 patent does not provide any special meaning for the term “received data,” we construe “received data” to mean “data that has been received.” The term “received data” implies data has been received but does not itself require the data to be received at a particular time, in a particular manner, by a particular device (such as an authentication host computer), or from a particular device (such as a device other than an authentication host computer). None of independent claims 1, 31, or 32 expressly recites from where the received data is sent, much less recite expressly that the data is sent from a device other than the authentication host computer. Of independent claims 1, 31, and 32, only independent claim 32 expressly requires a particular device—“an authentication host computer”—to receive data. Independent claims 1 and 31 require acting on received data in a certain manner—to transform (claim 1), or format (claim 31), received data in a certain manner to create formatted data. Thus, none of claims 1, 31, or 32 expressly requires an authentication host computer to receive data from a device other than the authentication host computer, as Patent Owner contends.” slip op. at 10

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

    “We agree with Petitioner that none of the claims requires the authenticity key to locate the preferences file or have the ability to determine the location of a preferences file. First, none of the independent claims recites the authenticity key being used to locate the preferences file.10 Nor is there evidence of written description support for such an interpretation— the ’191 patent does not disclose using an authenticity key to locate the preferences file. Rather, as noted previously, the ’191 patent discloses in a preferred embodiment that a preferences key, which is different than an authenticity key, is used to locate the preferences file. See Ex. 1001, 4:38– 40. This understanding is confirmed by Patent Owner’s declarant Dr. Katz. See Ex. 1034, 164:20–165:5. Further, Dr. Katz acknowledges the 9 To the extent that Patent Owner argues Dr. Tygar’s testimony concerning a particular embodiment disclosed in the ’191 patent acknowledges Patent Owner’s proposed construction here is correct (Paper 23, 2–4), we disagree. Dr. Tygar did not provide testimony about the meaning of the claims, only what a particular embodiment in the ’191 patent described. See Paper 27, 1– 3. 10 Claim 1 recites “returning. . . the formatted data to enable the authenticity key to be retrieved from the formatted data and to locate a preferences file”; independent claim 29 recites “the authenticity key enables location of a preferences file”; independent claims 31 and 32 require retrieving the authenticity key to locate a preferences file. Independent claim 17 does not recite the location of a preferences file. 19 authenticity key does not have information to locate the preferences file. See, e.g., Ex. 1034, 165:6–9. Petitioner’s proposed construction of independent claims 1, 17, 29, 31, and 32 as only requiring some action as a precondition to locating the preferences file better comports with the claims and written description of the ’191 patent. For example, the ’191 patent discloses that after verification of a received digital signature, the preferences key is requested and subsequently used to determine the location of the preferences file. See Ex. 1001, 4:22–40 (referring to Fig. 5). The verification of the received digital signature must occur before the preferences key can be requested and used to determine the location of the preferences file. In other words, verification of the received digital signature is a precondition of requesting and using the preferences key to determine the location of the preferences file. Thus, verification of the received digital signature enables—supplies the opportunity for11—the requested preferences key. We, therefore, adopt Petitioner’s proposed construction that the” slip op. at 19

  • Skill levelSkill level board ownDecided for petitioner

    “The parties propose similar levels of ordinary skill in the art and do not directly challenge the other’s proposal. Ex. 1002 ¶ 12 (testimony by Petitioner’s declarant); Ex. 2007 ¶ 8 (testimony by Patent Owner’s declarant). The parties’ declarants differ in the amount of work experience one with ordinary skill in the art with a bachelor’s degree would have. Patent Owner’s declarant opines two years of work experience would be sufficient, whereas Petitioner’s declarant opines five years of work experience would be necessary for one of ordinary skill in the art with a bachelor’s degree. Id. Despite these initial differences, Petitioner later acknowledged that record evidence supports a level of ordinary skill having two years of work experience. Hearing Tr. 32:1–16; see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating the level of ordinary skill in the art is reflected by the prior art of record). We adopt the areas of agreement in the parties’ proposals. Therefore, one of ordinary skill in the art would have a bachelor’s degree in computer 23 science (or an equivalent field) and least two years of work experience in the area of information technology.” slip op. at 23

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Weighing the testimony of the declarants, as discussed above, we credit Dr. Tygar’s testimony over Dr. Katz’s testimony that Arent discloses sending the digital signature separately from the message. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech 31 Ctr., 367 F.3d at 1368 (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”). First, Dr. Katz does not address sufficiently the Petitioner’s position regarding the signed web offer being the formatted data recited in claims 1, 31, and 32. Rather, Dr. Katz focuses his testimony on Arent’s technology for authentication of a merchant, whereas Petitioner relies on Arent’s authentication of the offer. Compare Pet. 29–32, Reply 3–4 with Ex. 1034 153:10–154:21, 159:17–160:19; see also Ex. 1035 ¶ 52 (Dr. Tygar confirming Dr. Katz based his understanding on Arent’s discussion of the authentication of a merchant). Second, Dr. Tygar directly counters Dr. Katz’s testimony. Dr. Tygar testifies that “[c]onventional digital signature techniques would not have sent the message and signature separately, especially in the context of signing web pages.” Ex. 1035 ¶ 53 (explaining how “an elaborate system would be needed to correlate specific instances of web pages for specific user/browser combinations and specific moments in time and the corresponding digital signatures” if digital signatures were sent separately from messages/web pages).” slip op. at 31

  Patent outcomesUS 7,631,191 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,631,191
• Fujitsu Semiconductor Limited / Fujitsu Semiconductor America, Inc. et al. v. Zond, LLCAll claims unpatentable
  PTAB · Aug 14, 2015 · IPR2014-00781 · APJ Joni Y Chang · IPR · Final written decision

  Claims 20, 21, 34–36, 38, 39, 47, and 49 are unpatentable under § 103(a) over the stated combinations of prior art.

  RulingsFinal written decision

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

    “multi-step ionization process” Claim 20 recites “the multi-step ionization process comprising exciting the ground state atoms to generate excited atoms, and then ionizing the excited atoms within the weakly-ionized plasma without forming an arc discharge.” Ex. 1201, 22:57–61 (emphasis added). Prior to institution, the parties submitted their proposed claim constructions for the claim term “multi-step ionization process.” Pet. 18–19; Prelim. Resp. 20–21. In the Decision on Institution, we addressed each of the parties’ contentions, and adopted Zond’s proposed construction, in light of the Specification, as the broadest reasonable interpretation. Dec. 11–12; Ex. 1201, 9:18–36. The parties do not challenge any aspect of our claim construction as to this term. PO Resp. 12; Reply 2. Upon review of the present record, we discern no reason to change our claim construction. We, therefore, construe the claim term “multi-step ionization process” in light of the Specification as “an ionization process having at least two distinct steps.” slip op. at 7

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

    “We further are not persuaded by Zond’s argument that applying Kudryavtsev’s model on plasma behavior to Wang’s sputtering apparatus would have been beyond the level of ordinary skill, or that one with ordinary skill in the art would not have had a reasonable expectation of success in combining the teachings. Obviousness does not require absolute predictability, only a reasonable expectation that the beneficial result will be achieved. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As Dr. Overzet testifies, Kudryavtsev’s model on plasma behavior is not intended to be limited to a particular type of plasma apparatus. Ex. 1240 ¶ 55. Indeed, Kudryavtsev discloses a study of the ionization relaxation in plasma when the external electric field suddenly increases. Ex. 1204, 30. Specifically, Kudryavtsev discloses that “the electron density increases explosively in time due to accumulation of atoms in the lowest excited states.” Id. at Abs. (emphasis added). Kudryavtsev also describes the experimental results that confirm the model. Id. at 32–34. Moreover, Kudryavtsev expressly explains that “the effects studied in this work are characteristic of ionization whenever a field is suddenly applied to a weakly ionized gas.” Id. at 34 (emphasis added). Dr. Overzet also testifies that a person having ordinary skill in the art “would have looked to Kudryavtsev to understand how plasma would react to a voltage pulse, and how to achieve an explosive increase in electron density” when generating a strongly-ionized plasma for improving sputtering and manufacturing processing. Ex. 1240 ¶ 56. Dr. Overzet further explains that such an artisan would have known how to apply Kudryavtsev’s model to Wang’s system by making any necessary changes to accommodate the differences through routine experimentation. Id. ¶¶ 57– 58. On this record, we credit Dr. Overzet’s testimony (id. ¶¶ 55–58) because his explanations are consistent with the prior art of record.” slip op. at 21

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

    “argument. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the [inventor].” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). A reference, however, 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 Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, the portion of Wang relied upon by Zond does not discuss a UV source, much less teach away from using a UV source for ionizing the feed gas to generate a weakly-ionized plasma. Zond’s argument and expert testimony again conflate Wang’s first embodiment with Wang’s second embodiment, and narrowly focus on Wang’s first embodiment in which the gas is not pre-ionized and the plasma is ignited using a high power pulse. PO Resp. 53–55; Ex. 2005 ¶¶ 166–68 (citing Ex. 1205, 7:3–17). By contrast, in the second embodiment, Wang teaches the advantages of generating a weakly-ionized plasma, to pre-ionize the gas, before applying the high power pulses. Id. at 7:13–8:12. We do not discern that these advantages criticize, discredit, or otherwise discourage using a UV source.” slip op. at 38

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Upon consideration of the facts in the present record, we are persuaded by GlobalFoundries’s contentions and supporting evidence. Although evidence establishing a specific date of cataloging and shelving before the critical date would have been desirable, it is not required in a public accessibility determination. See Hall, 781 F.2d at 899. Here, the critical date is September 30, 2002—the filing date of the application that issued as the ’759 patent. Ex. 1201, at [22]. The certified English-language translation of the catalog entry is reproduced below with green annotations added (Ex. 1219, 1): As depicted above, the catalog entry shows that it is an entry from the Russian State Library’s catalog of dissertations in Russian. Ex. 1219, 2. As we determined previously in the Decision on Institution (Dec. 6–8), the catalog entry clearly shows a publication date of 1994 (“Imprint Moscow 1994”), well before the critical date of September 30, 2002. Id. Zond had the opportunity, during this trial, to object to evidence and file a motion to exclude the evidence submitted by GlobalFoundries. Zond, however, did not object under 37 C.F.R. § 42.64(b) to the admissibility of the catalog entry or the Mozgrin Thesis. Notably, Zond does not challenge the authenticity of these documents, nor allege that they constitute inadmissible hearsay. Therefore, the information set forth in catalog entry can be relied upon by GlobalFoundries as evidence supporting its contention” slip op. at 41

  Patent outcomesUS 7,147,759 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,147,759

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.