Toshiba Corporationv.Zond LLC

Patent Trial and Appeal Board

Oct 2, 2015

11183463 (P.T.A.B. Oct. 2, 2015)

Trials@uspto.gov Paper 50
571-272-7822 Entered: October 2, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

FUJITSU SEMICONDUCTOR LIMITED, FUJITSU SEMICONDUCTOR
AMERICA, INC., ADVANCED MICRO DEVICES, INC., RENESAS
ELECTRONICS CORPORATION, RENESAS ELECTRONICS
AMERICA, INC., GLOBALFOUNDRIES U.S., INC.,
GLOBALFOUNDRIES DRESDEN MODULE ONE LLC & CO. KG,
GLOBALFOUNDRIES DRESDEN MODULE TWO LLC & CO. KG,
TOSHIBA AMERICA ELECTRONIC COMPONENTS, INC., TOSHIBA
AMERICA INC., TOSHIBA AMERICA INFORMATION SYSTEMS,
INC., TOSHIBA CORPORATION, and THE GILLETTE COMPANY,
Petitioner,

v.

ZOND, LLC,
Patent Owner.
____________

Case IPR2014-00802
1

Patent 7,811,421 B2
____________

Before KEVIN F. TURNER, DEBRA K. STEPHENS, JONI Y. CHANG,
SUSAN L. C. MITCHELL, and JENNIFER MEYER CHAGNON,
Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge Chagnon.
Opinion Dissenting-in-Part filed by Administrative Patent Judge Stephens.

1
Cases IPR2014-00848, IPR2014-00992, and IPR2014-01071 have been
joined with the instant proceeding.
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2
CHAGNON, Administrative Patent Judge.

FINAL WRITTEN DECISION
Inter Partes Review
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

I. INTRODUCTION
We have jurisdiction to hear this inter partes review under 35 U.S.C.
§ 6(c). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
and 37 C.F.R. § 42.73. For the reasons discussed herein, we determine that
Petitioner has shown by a preponderance of the evidence that claims 9, 14,
21, 26, 35 and 37 of U.S. Patent No. 7,811,421 B2 (Ex. 1201, “the ’421
patent”) are unpatentable.
A. Procedural History
Taiwan Semiconductor Manufacturing Company, Ltd. and TSMC
North America Corp. (collectively, “TSMC”) filed a Petition (Paper 1,
“Pet.”) seeking inter partes review of claims 9, 14, 21, 26, 35 and 37 (“the
challenged claims”) of the ’421 patent. TSMC included a Declaration of
Uwe Kortshagen, Ph.D. (Ex. 1202) to support its positions. Zond (“Patent
Owner”) filed a Preliminary Response (Paper 8, “Prelim. Resp.”). Pursuant
to 35 U.S.C. § 314(a), on October 6, 2014, we instituted an inter partes
review of the challenged claims to determine if claims 9, 21, and 35 are
unpatentable under 35 U.S.C. § 103 as obvious over the combination of
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Wang
2
and Kudryavtsev
3
; and if claims 14, 26, and 37 are unpatentable
under 35 U.S.C. § 103 as obvious over the combination of Wang and
Mozgrin Thesis.
4
Paper 9 (“Inst. Dec.”).
Subsequent to institution, we granted revised Motions for Joinder
filed by other Petitioners listed in the Caption above, joining Cases
IPR2014-00848, IPR2014-00992, and IPR2014-01071 with the instant trial
(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. 1228). An oral hearing
6
was held on

2
U.S. Patent No. 6,413,382 B1, issued July 2, 2002 (Ex. 1204).
3
A.A. Kudryavtsev and V.N. Skerbov, Ionization Relaxation in a Plasma
Produced by a Pulsed Inert-Gas Discharge, 28 SOV. PHYS. TECH. PHYS.
30–35 (Jan. 1983) (Ex. 1206).
4
D.V. Mozgrin, High-Current Low-Pressure Quasi-Stationary Discharge in
a Magnetic Field: Experimental Research, Thesis at Moscow Engineering
Physics Institute (1994). Mozgrin Thesis is a Russian-language reference
(Ex. 1208). Citations to Mozgrin Thesis herein are to the certified English-
language translation submitted by Petitioner (Ex. 1207).
5
We refer to the remaining parties, listed in the Caption above, collectively,
as “Petitioner” throughout this Decision.
6
The oral arguments for IPR2014-00781, IPR2014-00782, IPR2014-00800,
IPR2014-00802, IPR2014-00805, IPR2014-01083, IPR2014-01086, and
IPR2014-01087 were consolidated.
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June 8, 2015. A transcript of the hearing is included in the record. Paper 49
(“Tr.”).
B. Related Proceedings
The parties indicate that the ’421 patent was asserted against
Petitioner, as well as other defendants, in seven district court lawsuits
pending in the District of Massachusetts. Pet. 1; Paper 5.
C. The ’421 Patent
The ’421 patent relates to a method and apparatus for high-deposition
sputtering. Ex. 1201, Abstract. At the time of the invention, sputtering was
a well-known technique for depositing films on semiconductor substrates.
Id. at 1:15–16. As discussed in the ’421 patent, prior art magnetron
sputtering systems deposited films having low uniformity, poor target
utilization (the target material erodes in a non-uniform manner), and
relatively low deposition rate (low amount of material deposited on the
substrate per unit time). Id. at 1:63–2:14. The ’421 patent discloses that
increasing the power applied to the plasma, in an attempt to increase the
target utilization and sputtering yield, can also “increase[] the probability of
establishing an undesirable electrical discharge (an electrical arc) in the
process chamber.” Id. at 3:20–29.
The ’421 patent further discloses that using pulsed power can reduce
the probability of establishing an electrical breakdown condition, but that
large power pulses still can result in undesirable electrical discharges. Id. at
3:30–38. According to the ’421 patent, however, first forming a weakly-
ionized plasma “substantially eliminates the probability of establishing a
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breakdown condition in the chamber . . . when high-power pulses are applied
between the cathode . . . and the anode.” Id. at 9:16–19. Once a
weakly-ionized plasma is formed, high-power pulses are applied between
the cathode and anode to generate a strongly-ionized plasma from the
weakly-ionized plasma. Id. at 9:29–31, 10:8–9. The “probability of
establishing a breakdown condition is substantially eliminated because the
weakly-ionized plasma has a low-level of ionization that provides electrical
conductivity through the plasma. This conductivity greatly reduces or
prevents the possibility of a breakdown condition, even when high power is
applied to the plasma.” Id. at 9:23–28.
D. Illustrative Claim
Each of the challenged claims depends from one of independent
claims 1, 17, and 34, which are not challenged in the present Petition.
Claim 1 is illustrative, and is reproduced as follows:
1. A sputtering source comprising:
a) a cathode assembly comprising a sputtering target that
is positioned adjacent to an anode; and
b) a power supply that generates a voltage pulse between
the anode and the cathode assembly that creates a
weakly-ionized plasma and then a strongly-ionized plasma from
the weakly-ionized plasma without an occurrence of arcing
between the anode and the cathode assembly, an amplitude, a
duration and a rise time of the voltage pulse being chosen to
increase a density of ions in the strongly-ionized plasma.
Ex. 1201, 22:14–24.
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II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable construction in light of the specification of the
patent in which they appear. 37 C.F.R. § 42.100(b); see In re Cuozzo Speed
Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015). Claim terms
generally 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). Significantly, claims are not interpreted in a vacuum but are part of,
and read in light of, the specification. United States v. Adams, 383 U.S. 39,
49 (1966) (“[I]t is fundamental that claims are to be construed in the light of
the specifications and both are to be read with a view to ascertaining the
invention.”) (citations omitted).
An inventor may provide a special definition of the term in the
specification, as long as this is done so “with reasonable clarity,
deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994). In the absence of such a definition, however, limitations are not to be
read from the specification into the claims. In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993).
Claim Terms
“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
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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.”
“without an occurrence of arcing”
Each of the independent claims from which the challenged claims
depend recites “creat[ing] a weakly-ionized plasma and then a strongly-
ionized plasma from the weakly-ionized plasma without an occurrence of
arcing between the anode and the cathode assembly.” Ex. 1201, 22:18–22,
23:14–18, 24:17–20. We did not provide an express construction of the
claim term “without an occurrence of arcing” in our Institution Decision.
The Specification of the ’421 patent does not recite or explicitly define the
claim term. Rather, it discloses a process that reduces or substantially
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eliminates the possibility of the occurrence of arcing when high-power
pulses are applied to a pre-ionized plasma.
For instance, the Specification of the ’421 patent discloses:
Forming a weakly-ionized or pre-ionized plasma
substantially eliminates the probability of establishing a
breakdown condition in the chamber 202 when high-power
pulses are applied between the cathode assembly 216 and the
anode 238. . . . The probability of establishing a breakdown
condition is substantially eliminated because the
weakly-ionized plasma has a low-level of ionization that
provides electrical conductivity through the plasma. This
conductivity greatly reduces or prevents the possibility of a
breakdown condition when high power is applied to the plasma.
Id. at 9:16–28 (emphases added).
As described herein, the formation of weakly-ionized plasma
262 substantially eliminates the possibility of creating a
breakdown condition when high-power pulses are applied to the
weakly-ionized plasma 262. The suppression of this
breakdown condition substantially eliminates the occurrence of
undesirable arcing between the anode 238 and the cathode
assembly 216.
Id. at 15:66–16:5 (emphases added).
In its Response, Patent Owner argues both that the claims require
creation of the weakly-ionized plasma without an occurrence of arcing (see,
e.g., PO Resp. 11, 14, 16, 18, 28; Tr. 59:22–62:7), and that “[w]hile the
presence of pre-ionized plasma in figure 6 [of Wang] reduces the likelihood
of arcing, Wang never says that the background power PB entirely
eliminated arcing after ignition” (PO Resp. 33, citations omitted).
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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
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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”).
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
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. 1228 ¶ 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. 1201, 9:16–28, 15:66–16:5.
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It is well settled that “[a] claim construction that excludes the
preferred embodiment is rarely, if ever, correct and would require highly
persuasive evidentiary support.” Adams Respiratory Therapeutics, Inc. v.
Perrigo Co., 616 F.3d 1283, 1290 (Fed. Cir. 2010) (internal quotations
omitted). A construction that excludes all disclosed embodiments, as urged
by Patent Owner here, is especially disfavored. MBO Labs., Inc. v. Becton,
Dickinson & Co., 474 F.3d 1323, 1333 (Fed. Cir. 2007). In short, claim
construction requires claim terms to be read so that they encompass the very
preferred embodiment they describe. On-Line Techs., Inc. v. Bodenseewerk
Perkin-Elmer GmbH, 386 F.3d 1133, 1138 (Fed. Cir. 2004).
Here, nothing in the Specification indicates that the possibility of
arcing is completely eliminated when the weakly-ionized plasma is
transformed to a strongly-ionized plasma. Rather, it explicitly states that
“the formation of weakly-ionized plasma 262 substantially eliminates the
possibility of creating a breakdown condition when high-power pulses are
applied to the weakly-ionized plasma 262,” and “[t]he suppression of this
breakdown condition substantially eliminates the occurrence of undesirable
arcing between the anode 238 and the cathode assembly 216.” Ex. 1201,
15:66–16:5 (emphases added).
Given the disclosure in the Specification, we decline to construe the
claims to require the transformation of the weakly-ionized plasma to a
strongly-ionized plasma occur with a guarantee of eliminating all possibility
of an electrical breakdown condition or arcing, because it would be
unreasonable to exclude the disclosed embodiments, all of which stop short
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of such a guarantee. See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed.
Cir. 2005) (en banc) (stating that the Specification is “the single best guide
to the meaning of a disputed term”). Instead, we construe the claim term
“without developing an electrical breakdown condition in the chamber” as
“substantially eliminating the possibility of developing an electrical
breakdown condition in the chamber,” consistent with an interpretation that
one of ordinary skill in the art would reach when reading the claim term in
the context of the Specification. Additionally, as noted above, we also
decline to construe the claims to require formation of the weakly-ionized
plasma without an occurrence of arcing, and instead, consistent with the
Specification of the ’421 patent, determine the “without an occurrence of
arcing” language modifies only the creation of the strongly-ionized plasma
from the weakly-ionized plasma.
“creates a weakly-ionized plasma and then a strongly-ionized
plasma from the weakly-ionized plasma”
Each of independent claims 1 and 17 recites “a voltage pulse . . . that
creates a weakly-ionized plasma and then a strongly-ionized plasma from
the weakly-ionized plasma.”
7
Ex. 1201, 22:18–20, 23:14–16. We did not
provide an express construction of the term “creates” in our Institution
Decision.

7
Claim 34 recites, similarly, a “voltage pulse creating a weakly-ionized
plasma and then a strongly-ionized plasma from the weakly-ionized
plasma.” Ex. 1201, 24:17–19.
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In its Response, Patent Owner proposes the phrase “creates a
weakly-ionized plasma” should be interpreted as “ignites a gas from a state
in which there is no plasma to a state in which a plasma exists, wherein the
plasma is initially a weakly-ionized plasma . . . .” PO Resp. 22. In support
of its proposed construction, Patent Owner identifies the following portions
of the Specification in support of its construction (PO Resp. 18):
In operation, the pulsed power supply 102 applies a
voltage pulse between the cathode assembly 114 and the anode
130 that has a sufficient amplitude to ionize the argon feed gas
in the vacuum chamber 104.
Ex. 1201, 4:13–15.
The amplitude and shape of the voltage pulse are such that a
weakly-ionized plasma is generated in the region 246 between
the anode 238 and the cathode assembly 216.
Id. at 8:19–21.
In one embodiment, the pulsed power supply 234
generates a low power pulse . . . in order to generate the
weakly-ionized plasma.
Id. at 8:29–34.
Patent Owner also cites to Dr. Kortshagen’s deposition, in which he
testified the mechanism of the “creation of a plasma” is “typically referred to
as ignition of the plasma where you go from a state where you do not have a
plasma present to a state where you now have a plasma present.” PO
Resp. 19; Ex. 2017, 12:13–24. Patent Owner further contends that
Petitioner’s discussion of Wang in the Petition suggests Petitioner uses
“creates a weakly-ionized plasma” to refer to “ignition of a gas to cause a
plasma to come into existence.” PO Resp. 19–20.
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Petitioner argues that Patent Owner’s proposed construction
improperly reads an “ignite” limitation into the claims. Reply 2. Petitioner
argues the Specification of the ’421 patent describes other embodiments that
support a broader interpretation of “creates,” and proposes the term should
be construed to have its plain and ordinary meaning or an explicit
construction of “forms or generates.” Id. at 3–4 (citing Ex. 1201, 16:42–44,
16:48–51).
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. 1201, 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.
We are not persuaded by Patent Owner’s contention that one of
ordinary skill in the art would interpret “creates a weakly-ionized plasma” as
suggested (PO Resp. 18–22). In its Motion on Observations, Patent Owner
further argues that Dr. Overzet’s deposition testimony supports its proposed
construction. Paper 44, 1–5. We are not persuaded, however, that
Dr. Overzet’s cited testimony supports Patent Owner’s proposal, nor is it
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necessary for construction of the claims; instead, we determine the meaning
of the claim limitation is apparent from the intrinsic evidence alone.
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
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.
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“pulse”
Each of independent claims 1 and 17 recites “a power supply that
generates a voltage pulse.”
8
Ex. 1201, 22:17, 23:13. Patent Owner asserts
the term “pulse” should be given its ordinary meaning, but does not proffer
any “formal construction.” PO Resp. 17. Petitioner proposes we construe
“pulse” as “a property (e.g., voltage, current, or power) that is applied over a
period of time.” Reply 6.
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.
B. Principles of Law
To prevail in its challenges to the patentability of the claims,
Petitioner must prove unpatentability by a preponderance of the evidence.
35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). 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

8
Claim 34 recites, similarly, “generating a voltage pulse.” Ex. 1201, 24:15.
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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).
We analyze the asserted grounds of unpatentability in accordance with
the above-stated principles.
C. Obviousness Over Wang in Combination with Kudryavtsev
Petitioner asserts that each of claims 9, 21, and 35 is unpatentable
under 35 U.S.C. § 103 as obvious over the combination of Wang and
Kudryavtsev. Pet. 43–56. Petitioner explains how each claim limitation is
disclosed in or taught by the cited references, and provides an articulated
reasoning with rational underpinning to support combining the prior art
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teachings. Id. Petitioner also relies on the Declarations of Dr. Kortshagen
(Ex. 1202) and Dr. Overzet (Ex. 1228) to support its Petition and Reply,
respectively. Patent Owner responds that Wang does not disclose every
element of the independent claims from which claims 9, 21, and 35 depend,
relying on the Declaration of Dr. Hartsough (Ex. 2015) to support its
Response. PO Resp. 23–44.
We have reviewed the entire record before us, including the parties’
explanations and supporting evidence presented during this trial. We begin
our discussion with a brief summary of Wang, and then we address the
parties’ contentions in turn.
Wang
Wang discloses a power pulsed magnetron sputtering method for
generating a very high plasma density. Ex. 1204, Abstract. Wang also
discloses a sputtering method for depositing metal layers onto advanced
semiconductor integrated circuit structures. Id. at 1:4–15.
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Figure 1 of Wang, reproduced below, illustrates a cross-sectional view
of a magnetron sputtering reactor:

As shown in Figure 1 of Wang, magnetron sputtering apparatus 10 has
pedestal 18 for supporting semiconductor substrate 20, anode 24, cathode
14, magnet assembly 40, and pulsed DC power supply 80. Ex. 1204, 3:57–
4:55. According to Wang, the apparatus creates high-density plasma in
region 42, which ionizes a substantial fraction of the sputtered particles into
positively charged metal ions and also increases the sputtering rate. Id. at
4:13–34. Magnet assembly 40 creates a magnetic field near target 14, which
traps electrons from the plasma to increase the electron density. Id. at 4:23–
27. Wang further recognizes that, if a large portion of the sputtered particles
are ionized, the films are deposited more uniformly and effectively. Id. at
1:24–29.
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Figure 6 of Wang, reproduced below, illustrates how the apparatus
applies a pulsed power to the plasma:

As shown in Figure 6 of Wang, the target is maintained at background
power level PB between high power pulses 96 with peak power level PP.
Ex. 1204, 7:13–39. Background power level PB exceeds the minimum
power necessary to support a plasma in the chamber at the operational
pressure (e.g., 1 kW). Id. Peak power PP is at least 10 times (preferably 100
or 1000 times) background power level PB. Id. The application of high peak
power PP causes the existing plasma to spread quickly, and increases the
density of the plasma. Id. According to Dr. Kortshagen, Wang’s apparatus
generates a low-density (weakly-ionized) plasma during the application of
background power PB, and a high-density plasma during the application of
peak power PP. Ex. 1202 ¶ 126; see Pet. 45–46. In Wang, background
power PB may be generated by DC power supply 100 and peak power PP
may be generated by pulsed power supply 80. Ex. 1204, 7:56–64, Fig. 7;
Ex. 1202 ¶ 42.
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Independent Claims 1, 17, and 34
Petitioner explains how each limitation of independent claims 1, 17,
and 34 is disclosed in Wang. Pet. 43–52. For example, regarding claim 1,
Petitioner contends that anode 24 and the cathode assembly, including
sputtering target 14, of Wang disclose the claimed cathode assembly
adjacent an anode. Id. at 43–44; Ex. 1204, 3:33–4:1; Ex. 1202 ¶ 122.
Petitioner further contends that the combination of DC power supply 100
and pulsed DC power supply 80, the outputs of each of being coupled to
cathode target 14, discloses the claimed power supply that generates a
voltage pulse. Pet. 44–45; Ex. 1204, 3:66–4:1, 7:58–62, Figs. 1, 6, 7;
Ex. 1202 ¶¶ 123–125. According to Petitioner, DC power supply 100 of
Wang supplies background power PB that generates a low density plasma,
thus disclosing creating a weakly-ionized plasma, and pulsed DC power
supply 80 of Wang supplies peak power PP that generates a high density
plasma from the weakly-ionized plasma, thus disclosing creating a
strongly-ionized plasma. Pet. 45–46; Ex. 1204, 7:17–39; Ex. 1202
¶¶ 126–127. Petitioner contends that Wang also discloses forming the
strongly-ionized plasma without arcing. Pet. 46–47; Ex. 1204, 7:3–6, 7:13–
28, 7:47–49, Fig. 6; Ex. 1202 ¶¶ 128–129. Petitioner further contends that
Wang discloses the voltage pulse having an amplitude, duration, and/or rise
time to result in an increased density of ions in the strongly-ionized plasma.
Pet. 47–49; Ex. 1204, 5:23–26, 7:19–30; Ex. 1202 ¶¶ 130–131. In its
discussion of claims 17 and 34, Petitioner primarily refers back to its
discussion of corresponding limitations of claim 1. See Pet. 49–52.
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Regarding claim 17, Petitioner further relies on pedestal electrode 18 and
RF power source 44 of Wang as disclosing the claimed substrate support and
bias voltage source. Pet. 49–50; Ex. 1204, 3:63–66, 4:32–34; Ex. 1202
¶¶ 136–137.
With respect to the independent claims, the parties’ dispute mainly
centers on: (1) whether Wang discloses the claimed “power supply that
generates a voltage pulse between the anode and the cathode assembly that
creates a weakly-ionized plasma and then a strongly-ionized plasma from
the weakly-ionized plasma without an occurrence of arcing”; and
(2) whether Wang discloses “an amplitude, a duration [and/or] a rise time of
the voltage pulse being chosen to increase a density of ions in the
strongly-ionized plasma,” as claimed. We address each of these limitations
in turn.
“power supply that generates a voltage pulse between the anode and
the cathode assembly that creates a weakly-ionized plasma and then a
strongly-ionized plasma from the weakly-ionized plasma”
According to Petitioner, “[power] supply 100 [of Wang] generates the
voltage used for the background power, PB, and pulsed [power] supply 80
generates the train of voltage pulses used to produce the peak power, PP.”
Pet. 44 (citing Ex. 1204, 7:58–61). Petitioner continues that the “outputs of
pulsed DC power supply 80 and DC power supply 100 are coupled to the
cathode 14,” and the “[c]ombined pulsed DC power supply 80 and DC
power supply 100 generate the pulsed waveform illustrated in Figs. 6 and 7.”
Id. at 44–45 (citing Ex. 1204, Figs. 1, 7; Ex. 1202 ¶ 124). The background
power PB of Wang generates a low-density (i.e., a weakly-ionized plasma)
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and the peak power PP generates a high-density plasma (i.e., a
strongly-ionized plasma). Id. at 45–46 (citing Ex. 1204, 7:17–31; Ex. 1202
¶ 126).
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 feature 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. 1204, 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
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
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provide power to a target.” Reply 10 n.2 (citing Ex. 1228 ¶ 58). The
annotated version of Figure 7 of Wang to which Dr. Overzet refers is
reproduced below (Ex. 1228 ¶ 57):

The annotated version of Figure 7, reproduced above, illustrates a combined
power supply of Wang. As noted by Dr. Overzet, “properties such as power
are additive, which means that they can be combined to produce a desired
result.” Ex. 1228 ¶ 57. In this instance, the components circled in red
above, cooperate to produce the waveform shown in Figure 6 of Wang, thus
disclosing the required power supply. Id.; see Pet. 44–45. We agree.
We also do not find Patent Owner’s arguments that the background
power PB of Wang does not disclose a “voltage pulse,” as claimed, to be
persuasive. As discussed above, Petitioner relies on the combination of
background power PB and peak power PP as disclosing a waveform
corresponding to the claimed “voltage pulse.” See Pet. 44–45.
Patent Owner attempts to distinguish between a “continuous” power
supply versus a “pulsed” power supply. See, e.g., PO Resp. 9–15. However,
even Patent Owner’s arguments regarding the claimed “voltage pulse”
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obfuscate any distinction in this regard. For example, Patent Owner asserts
that “[t]he [low power] pulse, by definition has a limited duration called the
‘pulse width.’ But before the pulse terminates (i.e., while the weakly
ionized plasma is present), the same pulsed power supply 234 increases its
power output to transition the weakly ionized plasma to a strongly-ionized
plasma.” PO Resp. 12 (emphasis added) (citing Ex. 1201, 8:34–36, 9:29–32,
11:21–26, 11:60–62, Figs. 5A–5D, and related discussion; Ex. 2015 ¶¶ 64–
70). It is unclear how a pulse can both have a distinct pulse width, that
according to Patent Owner must be present in order to be considered a
“pulse,”
9
and still remain present when the power is increased to transition
the weakly-ionized plasma to a strongly-ionized plasma.
Notably, the waveform disclosed in Wang is the same waveform as
that of the disclosed embodiments of the ’421 patent. An annotated
comparison of Figure 6 of the ’421 patent and Figure 6 of Wang, provided
by Dr. Overzet (Ex. 1228 ¶ 38), is reproduced below.

9
See, e.g., PO Resp. 27 (arguing that Wang does not disclose “termination
of the DC power supply’s output or a ‘pulse width’ of that output” and that,
thus, the “output emitted by the DC supply [of Wang] is not a pulse having a
chosen duration, but is instead a continuous power as shown by the baseline
in figure 6”).
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As can be seen in the annotated comparison shown above, Figure 6 of Wang
illustrates that same approach as described in the ’421 patent. Ex. 1228
¶¶ 53–55; Ex. 1201, 15:56–58, 16:32–53, Fig. 6. More specifically, the
“periodic pulses applied to the plasma” shown in Figure 6 of the ’421 patent,
are described as being supplied by the pulsed power supply 234, where the
“pulsed power supply 234 continues to supply a background power that is
sufficient to maintain the plasma after time t6 . . . , while the pulsed power
supply 234 prepares to deliver the next high-power pulse.” Ex. 1201, 15:37–
16:51. We, thus, are persuaded that the periodic pulse waveform described
in Wang is sufficient to disclose the claimed “voltage pulse . . . that creates a
weakly-ionized plasma and then a strongly-ionized plasma from the
weakly-ionized plasma.”
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
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generates a voltage pulse between the anode and the cathode assembly that
creates a weakly-ionized plasma and then a strongly-ionized plasma from
the weakly-ionized plasma.”
“creates a weakly-ionized plasma and then a strongly-ionized plasma
from the weakly-ionized plasma without an occurrence of arcing
between the anode and the cathode assembly”
Petitioner asserts that Wang discloses “forming the strongly-ionized
plasma . . . without arcing,” as required by the claims. Pet. 46–47. Figure 6
of Wang is reproduced below (annotations by Petitioner, Pet. 12):

As shown in annotated Figure 6, the target is maintained at background
power level PB between power pulses 96, rising to peak power level PP.
Ex. 1204, 7:13–25. Background level PB is chosen to exceed the minimum
power necessary to support a plasma with little, if any, actual sputter
deposition. Id. The initial plasma ignition needs to be performed only once,
and at a very low power level so that particulates produced by arcing are
much reduced. Id. at 7:26–55. According to Dr. Kortshagen, because “the
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plasma need not be reignited thereafter, arcing will not occur during
subsequent applications of the background and peak power levels, PB and
PP.” Pet. 47; Ex. 1202 ¶ 129; see also Ex. 1204, 7:25–28 (“As a result, once
the plasma has been ignited at the beginning of sputtering prior to the
illustrated waveform [Fig. 6], no more plasma ignition occurs.”).
In its Response, Patent Owner argues that Wang does not disclose
eliminating arcing. PO Resp. 33–34. In this regard, Patent Owner draws a
distinction between reducing electrical breakdown conditions and
eliminating electrical breakdown conditions. Id. For example, Patent
Owner argues that “[w]hile the presence of a pre-ionized plasma in figure 6
[of Wang] reduces the likelihood of arcing, Wang never says that the
background power PB entirely eliminated arcing after ignition.” Id. at 33
(citing Ex. 1204, 7:47–49; Ex. 2014, 155:24–156:5).
Based on the evidence before us, we are not persuaded by Patent
Owner’s arguments. As noted in our claim construction above, we do not
construe the claims to require a guarantee of eliminating all possibility of an
electrical breakdown condition or arcing. Wang discloses that the
on-and-off pulsing in the first embodiment (shown in Figure 4), where
arcing admittedly occurs, can be improved further by maintaining a
background power level PB between pulses to avoid arcing, as illustrated by
Wang’s second embodiment in Figure 6. See Ex. 1204, 7:1–8:14. Notably,
Wang recognizes that, in the first embodiment (shown in Figure 4), because
the plasma is ignited with a high power pulse in each pulse cycle, the
chamber impedance dramatically changes between the on-and-off phases,
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and large particles are dislodged from the target or chamber. Id. at 5:28–32,
7:1–13. By contrast, in Wang’s second embodiment (as shown in Figure 6),
the plasma is ignited only once at a much lower power level PB, the
“chamber impedance changes relatively little between the two power levels
PB, PP,” (e.g., during the pulse). Id. at 7:47–55.
Further still, the power supply operation parameters disclosed in
Wang, fall within the broad ranges disclosed in the ’421 patent. See
Ex. 1228 ¶¶ 38–40; compare Ex. 1201, 15:37–17:17, Fig. 6, with Ex. 1204,
7:13–25, 5:66–67, Fig. 6. We, thus, are persuaded that one of ordinary skill
in the art would have recognized the embodiment illustrated in Figure 6 of
Wang discloses “forming the strongly-ionized plasma . . . without arcing,” as
required by the claims.
Given the evidence before us in the entire record, we determine that
Petitioner has demonstrated, by a preponderance of evidence, that Wang
discloses “creat[ing] . . . a strongly-ionized plasma from the weakly-ionized
plasma without an occurrence of arcing between the anode and the cathode
assembly,” as claimed.
“an amplitude, a duration and a rise time of the voltage pulse being
chosen to increase a density of ions in the strongly-ionized plasma”
Independent claims 1 and 17 each recite “an amplitude, a duration and
a rise time of the voltage pulse being chosen to increase a density of ions in
the strongly-ionized plasma.” Ex. 1201, 22:22–24, 23:18–20. Independent
claim 34 includes a similar limitation. As previously discussed, Petitioner
asserts that “Wang generates . . . a high density plasma with the peak power
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PP.” Pet. 45; see also Ex. 1204, 7:29–31 (“[T]he application of the high
peak power PP . . . quickly causes the already existing [weakly-ionized]
plasma to spread and increases the density of the plasma.”).
According to Petitioner, “Wang’s voltage pulse changes the power
level from the background power, PB, to the peak power, PP, . . . and each of
those peak pulses increases the density of the plasma such that a strongly-
ionized plasma is formed. Moreover, the density of Wang’s strongly-
ionized plasma increases during application of the peak power, PP.”
Pet. 47–48 (citing Ex. 1204, 7:28–30; Ex. 1202 ¶ 130). Petitioner continues,
“Wang therefore generates a ‘voltage pulse’ that increases the ‘density of
ions.’ Wang’s voltage pulse has an amplitude, a duration, and a rise time.”
Id. at 48 (citing Ex. 1202 ¶ 131). Petitioner asserts that “[o]ne of ordinary
skill would have understood that Wang’s voltage amplitude and duration
was controlled to produce Wang’s specified peak power level PP.” Id.
(citing Ex. 1202 ¶ 131).
Patent Owner asserts that Petitioner’s arguments are conclusory and
not supported by Wang. PO Resp. 38. Patent Owner supports this assertion,
stating merely because an applied electrical pulse has an associated rise
time, duration, and amplitude, as in Wang, does not necessitate that the rise
time, duration, or amplitude was somehow chosen to achieve the result of
the claims. Id. at 39–41. Patent Owner’s arguments are not persuasive.
Wang selects pulse characteristics and reactors with the goal of
“producing a high fraction of ionized sputtered particles” and increasing the
density of the plasma, which “has long been exploited in high-density
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plasma.” See Ex. 1204, 1:7–8, 1:30–37, 7:13–30. We are persuaded that
one of ordinary skill in the art would have understood from Wang’s
disclosure that the parameters of the rise time, duration, and amplitude of a
pulse must be controlled, to achieve the desired result, in this instance, to
increase the density of the plasma. See, e.g., Ex. 1202 ¶ 131; Ex. 1228
¶¶ 59–60.
In addition, claims 1 and 17 are apparatus claims and claim 34 is a
method claim. With respect to the apparatus claims, we are persuaded that
the claim recites an intended use that will not limit the scope of the claim,
such that anticipation of the claims is based on whether the elements of that
claim are disclosed, not on their intended use. With respect to claim 34, the
method does not require an optimization of magnitude or rise time to
achieve the strongly-ionized plasma, but simply that the amplitude and the
rise time of the voltage pulse achieve an increased density of ions, which
Wang discloses, as discussed above.
Based on the evidence before us, we are persuaded that Petitioner has
demonstrated, by a preponderance of evidence, that Wang discloses
choosing an amplitude, a duration, and a rise time of the voltage pulse, in
order to increase a density of ions in the strongly-ionized plasma.
For the reasons discussed, we determine that Petitioner has
demonstrated, by a preponderance of evidence, that Wang discloses all
limitations of claims 1, 17 and 34.
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Dependent Claims 9, 21, and 35
Claims 9 and 21 depend from claims 1 and 17, respectively, and recite
“wherein the voltage pulse generated between the anode and the cathode
assembly excites atoms in the weakly-ionized plasma and generates
secondary electrons from the cathode assembly, the secondary electrons
ionizing a portion of the excited atoms, thereby creating the strongly-ionized
plasma.” Ex. 1201, 22:52–57, 23:37–42. Claim 35 depends from claim 34
and includes similar limitations. Id. at 24:25–30. Patent Owner does not
provide separate arguments or otherwise address these claims in its
Response, beyond the arguments provided with respect to the independent
claims, which we do not find persuasive for the reasons discussed above.
Petitioner relies on Kudryavtsev for teaching that “ionization proceeds
in a slow stage followed by a fast stage and that excited atoms are produced
in both stages.” Pet. 53 (referring back to Pet. 26–30; citing Ex. 1202
¶ 147). Petitioner continues, “[e]xcited atoms will therefore be produced in
Wang’s weakly-ionized plasma in response to the voltage pulse.” Id. (citing
Ex. 1202 ¶ 147). Petitioner further asserts that the background section of the
’421 patent “admits . . . that secondary electrons are produced by collisions
[of ions] with the cathode” (Pet. 55 (referring back to Pet. 31; citing
Ex. 1202 ¶ 152)), and that “Kudryavtsev [also] teaches that collisions
between secondary electrons and excited atoms produce ions” (Pet. 55
(referring back to Pet. 32–33; citing Ex. 1202 ¶ 153)). Therefore, according
to Petitioner, the combination of Wang and Kudryavtsev teaches the
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additional limitations of claims 9, 21, and 35. Pet. 55–56 (citing Ex. 1202
¶ 153).
Petitioner further contends that, based on Kudryavtsev’s teaching that
“the effects studied in [Kudryavtsev] are characteristic of ionization
whenever a field is suddenly applied to a weakly ionized gas” (Ex. 1206, 34
(emphasis added)), one of ordinary skill in the art would have been
motivated to consider Kudryavtsev, when reading Wang, “to better
understand the effects of applying Wang’s pulse,” that “suddenly generate[s]
an electric field.” Pet. 53–54 (citing Ex. 1202 ¶ 148).
We are persuaded by Petitioner’s contentions and evidence. Given
the evidence in the record before us, we determine that Petitioner has
demonstrated, by a preponderance of evidence, that each of claims 9, 21, and
35 would have been obvious in view of Wang and Kudryavtsev.
D. Obviousness Over Wang and Mozgrin Thesis
Petitioner asserts that each of claims 14, 26, and 37 is unpatentable
under 35 U.S.C. § 103 as obvious over the combination of Wang and
Mozgrin Thesis. Pet. 56–58. Petitioner explains how each limitation is
disclosed in or taught by the cited references, as well as provides an
articulated reasoning with rational underpinning to support combining the
prior art teachings. Id. Petitioner again relies on the Declarations of
Dr. Kortshagen (Ex. 1202) and Dr. Overzet (Ex. 1228) to support its Petition
and Reply, respectively. Except to dispute the prior art status of the Mozgrin
Thesis, which we discuss below, Patent Owner does not provide separate
arguments or otherwise address these claims in its Response, beyond the
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arguments provided with respect to the independent claims, which we do not
find persuasive for the reasons discussed above.
Claims 14, 26, and 37 depend from claims 1, 17, and 34, respectively,
and each recites a “rise time of the voltage pulse is in the range of
approximately 0.01V/µsec to 1000V/µsec.” Ex. 1201, 23:1–3, 23:54–56,
24:34–36. Petitioner relies on Mozgrin Thesis as disclosing the claimed rise
time. Pet. 56 (referring back to Pet. 34–35; citing Ex. 1207, 63 (Fig. 3.2);
Ex. 1202 ¶¶ 95–98, 156). According to Petitioner, “[o]ne of ordinary skill
would have been motivated to use the rise time and pulse of the Mozgrin
Thesis in Wang so as to produce a dense plasma and provide desired
sputtering[, and because b]oth Wang and Mozgrin Thesis address similar
subject[s], such as pulsed sputtering, achieving high density plasma, and
avoiding arcing.” Id. at 56–57 (citing Ex. 1202 ¶¶ 156–157; Ex. 1204,
Abstract, 4:39–49; Ex. 1207, 4, 5, 25, 42, 102). Petitioner further contends
that the “[u]se of Mozgrin Thesis’ rise time in Wang would have been a
combination of old elements to yield predictable results.” Id. at 57 (citing
Ex. 1202 ¶ 156). We are persuaded by Petitioner’s contentions and evidence
and determine that Petitioner has shown, by a preponderance of the
evidence, that the cited combination teaches the additional limitations of
claims 14, 26, and 37.
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Printed Publication under 35 U.S.C. § 102 — Mozgrin Thesis
We address the issue of whether the Mozgrin Thesis is available as
prior art under 35 U.S.C. § 102(b)
10
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
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).
Petitioner asserts that the Mozgrin Thesis is a doctoral thesis at
Moscow Engineering Physics Institute, published in 1994, and, thus, it is
prior art under § 102(b). Pet. 4. To support its assertion, Petitioner proffers
a copy of the catalog entry for the Mozgrin Thesis at the Russian State

10
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 ’421 patent was filed before that
date, we refer to the pre-AIA version of § 102.
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Library, and a certified English-language translation thereof. Ex. 1209.
Petitioner also alleges that the catalog entry “also shows that it is the routine
business practice of the [Russian State Library] to index and catalog theses.”
Reply 20 (citing Ex. 1209). Dr. Kortshagen testifies that Mozgrin
11
—an
article that was published in 1995—summarizes the research presented in
the Mozgrin Thesis, and contains figures created from the photographs in the
Mozgrin Thesis. Ex. 1202 ¶ 93.
In its Response, Patent Owner counters that Petitioner fails to
demonstrate that the Mozgrin Thesis is prior art under § 102. PO Resp. 45–
48. Patent Owner contends that Petitioner provides no evidence as to the
actual date of cataloging of the Mozgrin Thesis. Id. Patent Owner further
alleges that the Mozgrin Thesis was not sufficiently accessible to be
considered a printed publication under § 102. Id. According to Patent
Owner, the “document says nothing of when the [Moscow Engineering
Physics] Institute (which is within the notoriously secretive former Soviet
Union) decided to allow the public unrestricted access to this thesis.” Id. at
45–46.
Upon consideration of the facts in the present record, we are
persuaded by Petitioner’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

11
D.V. Mozgrin et al., High-Current Low-Pressure Quasi-Stationary
Discharge in a Magnetic Field: Experimental Research, 21 PLASMA
PHYSICS REPORTS 400–409 (1995) (Ex. 1203).
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accessibility determination. See Hall, 781 F.2d at 899. Here, the earliest
possible critical date is November 14, 2002—the filing date of the earliest
application to which the application that issued as the ’421 patent claims
priority. Ex. 1201, 1:5–11.
The certified English-language translation of the catalog entry is
reproduced below with green annotations added (Ex. 1209, 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. 1209, 2. As
we determined previously in the Institution Decision (Inst. Dec. 7–8), the
catalog entry clearly shows a publication date of 1994 (“Imprint Moscow
1994”), well before the critical date of November 14, 2002. Id.
Patent Owner had the opportunity, during this trial, to object to
evidence and file a motion to exclude the evidence submitted by Petitioner.
Patent Owner, however, did not object under 37 C.F.R. § 42.64(b) to the
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admissibility of the catalog entry or the Mozgrin Thesis. Notably, Patent
Owner 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 Petitioner as evidence
supporting its contention that Mozgrin Thesis was cataloged in the Russian
State Library, and that it was sufficiently accessible to the public before the
critical date. Furthermore, Patent Owner 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, Patent Owner 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.
The fact that the thesis was cataloged in Russia, a foreign country,
does not change the result. Notably, the Federal Circuit has rejected the
argument that a cataloged thesis shelved at a university library in Germany
does not constitute sufficient accessibility to those interested in the art
exercising reasonable diligence. Hall, 781 F.2d at 899– 900. The Federal
Circuit also has held that an Australian patent application—classified and
laid open to public inspection by the Australian Patent Office—was
sufficiently accessible to interested persons to qualify as a prior art printed
publication under § 102. In re Wyer, 655 F.2d 221, 225– 26 (Fed. Cir.
1981).
Patent Owner further asserts that the catalog entry includes a
copyright notice of 2002 at the bottom of the page, and the number
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“01.04.08” in the Title entry, also providing evidence that the document was
not accessible prior to the critical date. PO Resp. 46. Neither of these
arguments is persuasive. The 2002 date appears to be a claim of copyright
in the Ex Libris database from which the catalog entry was retrieved, but
does not indicate necessarily that this is the date at which the Ex Libris
software first became available, as Patent Owner asserts. Further, Patent
Owner provides no evidence suggesting the “01.04.08” in the Title entry is a
date, or anything other than merely part of the Title of the document.
Based on the evidence before us, we observe that the Mozgrin Thesis
was cataloged and indexed in a meaningful way, by the author’s name, the
title of the thesis (“High-Current Low-Pressure Quasi-Stationary Discharge
in a Magnetic Field”), and the subject matter of the thesis (“Plasma Physics
and Chemistry”). Ex. 1209. As such, the catalog entry demonstrates that the
Mozgrin Thesis was made available to interested persons by virtue of its title
and “Subject” characterization. Upon consideration of the facts before us,
we determine that the Russian State Library’s catalog entry is credible
evidence to establish that the Mozgrin Thesis was made sufficiently
accessible to the public interested in the art before the critical date of
November 14, 2002. Accordingly, based on the totality of the
circumstances, we are persuaded that Petitioner has established sufficiently
that the Mozgrin Thesis is a printed publication under § 102.
Given the evidence in the record before us, we determine that
Petitioner has demonstrated, by a preponderance of evidence, that each of
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claims 14, 26, and 37 would have been obvious in view of Wang and
Mozgrin Thesis.
III. CONCLUSION
For the foregoing reasons, we determine that Petitioner has
demonstrated, by a preponderance of the evidence, that claims 9, 21, and 35
of the ’421 patent are unpatentable under 35 U.S.C. § 103 as obvious in view
of Wang and Kudryavtsev, and that claims 14, 26, and 37 of the ’421 patent
are unpatentable under 35 U.S.C. § 103 as obvious in view of Wang and
Mozgrin Thesis.
IV. ORDER
Accordingly, it is:
ORDERED that claims 9, 14, 21, 26, 35, and 37 of U.S. Patent
No. 7,811,421 B2 are held unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

IPR2014-00802
Patent 7,811,421 B2

STEPHENS, Administrative Patent Judge, dissenting-in-part.
I respectfully disagree with the Majority’s determination that the
Mozgrin Thesis is prior art under 35 U.S.C. § 102(b). For a reference to
qualify as a printed publication within the meaning of § 102, “the reference
must have been sufficiently accessible to the public interested in the art,”
before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989)
(quoting Constant v. Adv. Micro–Devices, Inc., 848 F.2d 1560, 1568 (Fed.
Cir. 1988)).
Patent Owner argues Petitioner failed to show the Mozgrin Thesis was
disseminated or otherwise made available to interested persons as a printed
publication more than one year prior to the filing date of the ’421 patent. PO
Resp. 45–48. Specifically, Patent Owner argues the catalog entry does not
indicate the Mozgrin Thesis was available prior to the filing date of the ’421
patent. Id.
“Because 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).
I am not persuaded Petitioner has shown the Mozgrin Thesis was
publicly accessible more than one year prior to the date of the application
for patent. Specifically, Petitioner relies on a catalog entry from the Russian
State Library’s catalog of dissertations, which includes the holdings, the
author, the title, the imprint (1994), the description, and the subject matter.
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Patent 7,811,421 B2

2
Ex. 1209, 1; Reply 19. Petitioner additionally asserts the Mozgrin Thesis
was shelved and indexed in the catalog of the library. Reply 19. Petitioner
further contends Exhibit 1209 “shows it is the routine business practice of
the library to index and catalog theses.” Reply 20. However, nothing in the
catalog entry speaks to the date on which the Mozgrin Thesis was
incorporated into the Russian State Library’s catalog of dissertations or
shelved, or even that the Russian State Library catalog of dissertations
existed at the time of invention. As our reviewing court has stated,
“[a]lthough ‘evidence establishing a specific date of cataloging’ was not
required in Hall, in that case we held that ‘competent evidence of the general
library practice’ of cataloging and shelving established that the thesis
became accessible prior to the critical date.” In re Lister, 583 F.3d 1307,
1316 (Fed. Cir. 2009) (vacating and remanding the Board of Patent Appeals
and Interferences’ decision that a prior art reference registered with the U.S.
Copyright Office and included in the Westlaw and Dialog databases was
publicly accessible for the purposes of 35 U.S.C. § 102(b)). Here, neither
the imprint date nor the labeling indicates the Mozgrin Thesis was publicly
accessible prior to the critical date. Further, Petitioner “has not identified
any evidence of the general practice” of the Russian State Library with
regard to catalog updates or shelving of received dissertations. See id. at
1316–17. Therefore, absent any evidence pertaining to when the Russian
State Library received the Mozgrin Thesis, when the publicly accessible
catalog was available, and what the general practices of the Russian State
Library between receipt of a thesis and subsequent incorporation into a
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Patent 7,811,421 B2

3
publicly accessible catalog are, the presumption the Mozgrin Thesis was
publicly accessible more than one year prior to the date of the application for
patent is pure speculation. See id. at 1316.
Petitioner further argues Zond waived its objection to the Mozgrin
Thesis and the electronic card catalog printout. Reply 20. I respectfully
disagree Patent Owner was required to object under 37 C.F.R. § 42.64(b).
Significantly, Patent Owner does not contend that the Mozgrin Thesis is
inadmissible under any Federal Rule of Evidence. Instead, Patent Owner
argues the Mozgrin Thesis is not prior art under 35 U.S.C. § 102(b) because
Petitioner has not shown the Mozgrin Thesis was publicly accessible –– a
challenge to the sufficiency or weight to be given to the Mozgrin Thesis.
Such argument is not proper in a motion to exclude, which is a challenge to
the admissibility of evidence, not a challenge to sufficiency. See Office
Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (August 14, 2012)
(stating that a motion to exclude may not be used to challenge the
sufficiency of the evidence to prove a particular fact).
Patent Owner properly provided arguments in the preliminary
response and response asserting Petitioner has not sufficiently demonstrated
that the Mozgrin Thesis is prior art under 35 U.S.C. § 102(b). Accordingly,
I am not persuaded Petitioner has established sufficiently that the Mozgrin
Thesis is a printed publication under 35 U.S.C. § 102(b). It follows, I am
not persuaded claims 14, 26, and 37 are unpatentable under § 103(a) as
obvious over the combination of Wang and Mozgrin Thesis.

IPR2014-00802
Patent 7,811,421 B2

For PATENT OWNER:
Bruce J. Barker
bbarker@chsblaw.com
Tarek Fahmi
tarek.fahmi@ascendalaw.com
Gregory J. Gonsalves
gonsalves@gonsalveslawfirm.com

For PETITIONERS:
Fujitsu:
David L. McCombs
david.mccombs.ipr@haynesboone.com
David M O’Dell
david.odell.ipr@haynesboone.com
Richard C. Kim
rckim@duanemorris.com

AMD:
Brian M. Berliner
bberliner@omm.com
Ryan K. Yagura
ryagura@omm.com
Xin-Yi Zhou
vzhou@omm.com

Renesas:
John J. Feldhaus
jfeldhaus@foley.com
IPR2014-00802
Patent 7,811,421 B2

Pavan Agarwal
pagarwal@foley.com
Mike Houston
mhouston@foley.com

GlobalFoundries:
David Tennant
dtennant@whitecase.com
Dohm Chankong
dohm.chankong@whitecase.com

Toshiba:
Robinson Vu
Robinson.vu@bakerbotts.com

Gillette:
Michael A. Diener
michael.diener@wilmerhale.com
Larissa B. Park
larissa.park@wilmerhale.com