Advanced Micro Devices, Inc.v.Zond LLC

Patent Trial and Appeal Board

Sep 23, 2015

10897257 (P.T.A.B. Sep. 23, 2015)

Trials@uspto.gov Paper 55
571-272-7822 Entered: September 23, 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 IPR2014-00807
1

Patent 7,604,716 B2
____________

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

CHAGNON, Administrative Patent Judge.

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

1
Cases IPR2014-00846, IPR2014-00974, and IPR2014-01065 have been
joined with the instant proceeding.
IPR2014-00807
Patent 7,604,716 B2

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 14–18
and 25–32 of U.S. Patent No. 7,604,716 B2 (Ex. 1201, “the ’716 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 14–18 and 25–32 (“the
challenged claims”) of the ’716 patent. TSMC included a Declaration of
Uwe Kortshagen, Ph.D. (Ex. 1202) to support its positions. Zond (“Patent
Owner”) filed a Preliminary Response (Paper 9,
2
“Prelim. Resp.”). Pursuant
to 35 U.S.C. § 314(a), on October 14, 2014, we instituted an inter partes
review of the challenged claims to determine if the claims are unpatentable
under 35 U.S.C. § 103 as obvious over the combination of Wang
3
and
Kudryavtsev.
4
Paper 10 (“Inst. Dec.”).

2
Patent Owner filed two copies of the Preliminary Response, which appear
to be identical. See Papers 8, 9. We refer to the copy filed as Paper 9
throughout the Decision.
3
U.S. Patent No. 6,413,382 B1, issued July 2, 2002 (Ex. 1204).
4
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. 1205).
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Subsequent to institution, we granted revised Motions for Joinder filed
by other Petitioners listed in the Caption above, joining Cases IPR2014-
00846, IPR2014-00974, and IPR2014-01065 with the instant trial (Papers
13–15), and also granted a Joint Motion to Terminate with respect to TSMC
(Paper 37).
5
Patent Owner filed a Patent Owner Response (Paper 29, “PO
Resp.”), along with a Declaration of Larry D. Hartsough, Ph.D. (Ex. 2004)
to support its positions. Petitioner filed a Reply (Paper 46, “Reply”) to the
Patent Owner Response, along with a supplemental Declaration of Dr.
Kortshagen (Ex. 1221). An oral hearing
6
was held on June 12, 2015. A
transcript of the hearing is included in the record. Paper 54 (“Tr.”).
B. Related Proceedings
The parties indicate that the ’716 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 ’716 Patent
The ’716 patent relates to a method and apparatus for generating a
strongly-ionized plasma, for use in various plasma processes. Ex. 1201,
Abstract, 7:30–47. For example, at the time of the invention, plasma
sputtering was a widely used technique for depositing films on substrates.
Id. at 1:24–25. As discussed in the ’716 patent, prior art magnetron

5
We refer to the remaining parties, listed in the Caption above, collectively,
as “Petitioner” throughout this Decision.
6
The oral arguments for IPR2014-00807, IPR2014-00808, IPR2014-00818,
IPR2014-00819, IPR2014-00821, IPR2014-00827, IPR2014-01098,
IPR2014-01099, and IPR2014-01100 were consolidated.
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4
sputtering systems deposited films having low uniformity and poor target
utilization (the target material erodes in a non-uniform manner). Id. at 3:20–
33. The ’716 patent discloses that increasing the power applied to the
plasma, in an attempt to increase the plasma uniformity and density, can also
“increase the probability of generating an electrical breakdown condition
leading to an undesirable electrical discharge (an electrical arc) in the
chamber.” Id. at 3:34–40.
The ’716 patent further discloses that using pulsed DC power can
reduce the probability of establishing such an electrical breakdown
condition, but that large power pulses still can result in undesirable electrical
discharges. Id. at 3:42–52. According to the ’716 patent, however, first
forming a weakly-ionized plasma “substantially eliminates the probability of
establishing a breakdown condition in the chamber when high-power pulses
are applied between the cathode . . . and the anode.” Id. at 6:16–19. 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 substantially prevents the setup of a breakdown condition, even
when high power is applied to the plasma.” Id. at 6:20–25.
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D. Illustrative Claims
Of the challenged claims, claims 14 and 26 are independent. Claims
15–18 and 25 depend from claim 14. Claims 27–32 depend from claim 26.
Claims 14 and 26 are illustrative, and are reproduced as follows:
14. A method for generating a strongly-ionized plasma,
the method comprising:
a. ionizing a feed gas in a chamber to form a
weakly-ionized plasma that substantially eliminates the
probability of developing an electrical breakdown condition in
the chamber; and
b. supplying an electrical pulse across the weakly-ionized
plasma that excites atoms in the weakly-ionized plasma,
thereby generating a strongly-ionized plasma without
developing an electrical breakdown condition in the chamber.
Ex. 1201, 21:1–11.
26. An apparatus for generating a strongly-ionized
plasma, the apparatus comprising:
a. an anode;
b. a cathode that is positioned adjacent to the anode;
c. an ionization source that generates a weakly-ionized
plasma proximate to the cathode, the weakly-ionized plasma
substantially eliminating the probability of developing an
electrical breakdown condition between the anode and the
cathode; and
d. a power supply that is electrically coupled to the anode
and to the cathode, the power supply generating an electric field
that excites atoms in the weakly-ionized plasma, thereby
forming a strongly-ionized plasma without developing an
electrical breakdown condition in the chamber.
Id. at 22:1–15.
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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”
Claim 14 recites supplying an electrical pulse to “excite[] atoms in [a]
weakly-ionized plasma, thereby generating a strongly-ionized plasma.”
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Ex. 1201, 21:7–9. Claim 26 similarly recites a “power supply generating an
electric field that excites atoms in [a] weakly-ionized plasma, thereby
generating a strongly-ionized plasma.” Id. at 22:11–13. Prior to institution,
the parties submitted proposed constructions for the claim terms “a
weakly-ionized plasma” and “a strongly-ionized plasma.” Pet. 13; Prelim.
Resp. 15–17. In our Institution Decision, we adopted Patent Owner’s
proposed constructions, in light of the Specification, as the broadest
reasonable interpretations. Inst. Dec. 6–8; see, e.g., Ex. 1201, 6:22–24 (“the
weakly-ionized plasma 232 has a low-level of ionization”), 7:16–18
(“high-power pulses generate a highly-ionized or a strongly-ionized plasma
238 from the weakly-ionized plasma 232”).
Subsequent to institution, notwithstanding that neither 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 10
12
[cm
-3
]” (PO
Resp. 4–5, 29). 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
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for the peak density of ions. PO Resp. 4–5 (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. 1201, 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 10
12

cm
-3
.”). It is well settled that “claims are interpreted with an eye toward
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
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9
claim term “a strongly-ionized plasma” as “a plasma with a relatively high
peak density of ions.”
“weakly-ionized plasma that substantially eliminates the probability of
developing an electrical breakdown condition”
Claim 14 recites forming “a weakly-ionized plasma that substantially
eliminates the probability of developing an electrical breakdown condition
in the chamber.” Ex. 1201, 21:3–6 (emphasis added). Claim 26 includes a
similar limitation. See id. at 22:5–9. During the pre-trial stage of this
proceeding, Patent Owner argued that this claim term requires the
weakly-ionized plasma be
plasma having a level of ionization that is low enough and
sufficiently conductive to substantially eliminate the setup of a
breakdown condition when the weakly[-]ionized plasma is
formed and when an electrical pulse is applied across the
plasma to thereby excite neutral atoms in the weakly-ionized
plasma to thereby generate a strongly ionized plasma.
Prelim. Resp. 18–20 (emphasis added). In our Institution Decision, we
construed this claim term as “weakly-ionized plasma that substantially
eliminates the probability of developing a breakdown condition when an
electrical pulse is applied across the plasma thereby to generate a
strongly-ionized plasma.” Inst. Dec. 9–10.
Subsequent to institution, notwithstanding that neither Patent Owner,
nor its expert witness, expressly challenged our construction as to this term
(see, e.g., Ex. 2004 ¶ 22), Patent Owner again improperly attempts to import
extraneous limitations into the claim by arguing repeatedly that the claims
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10
require that arcing
7
is avoided, even on plasma ignition. See, e.g., PO
Resp. 5, 28. Patent Owner’s interpretation, however, is not consistent with
the language of the claims, or the Specification. The Specification of the
’716 patent describes the weakly-ionized plasma only as substantially
eliminating the setup of a breakdown condition when the high-power pulses
are applied across the weakly-ionized plasma to generate a strongly-ionized
plasma; the Specification does not support Patent Owner’s assertion that the
setup of a breakdown condition be substantially eliminated when the weakly-
ionized plasma itself is formed. See, e.g., Ex. 1201, 6:16–25 (“Forming the
weakly-ionized or pre-ionized plasma . . . substantially eliminates the
probability of establishing a breakdown condition in the chamber when
high-power pulses are applied between the cathode . . . and the anode.”)
(emphasis added); id. at 11:39–47, 12:65–13:4, 16:59–63, 17:48–54; see
also id. at 5:41–46 (“[A] direct current (DC) power supply . . . is used in an
ionization source to generate and maintain the weakly-ionized . . .
plasma . . . . In this embodiment, the DC power supply is adapted to
generate a voltage that is large enough to ignite the weakly-ionized plasma.”)
(emphasis added); id. at 11:51–54 (“[T]he power from the pulsed power
supply . . . is continuously applied after the weakly-ionized plasma . . . is
ignited in order to maintain the weakly-ionized plasma . . . .”) (emphasis
added). The additional claim language of claims 14 and 26, which recites
generating/forming “a strongly-ionized plasma [by exciting atoms in the

7
Patent Owner often uses the term “arcing” when discussing the claim term
“electrical breakdown condition.” See, e.g., PO Resp. 26–30.
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11
weakly-ionized plasms] without developing an electrical breakdown
condition in the chamber,” also supports our claim construction set forth in
the Institution Decision. Ex. 1201, 21:7–11, 22:11–15.
Upon consideration of the parties’ explanations and supporting
evidence, we discern no reason to change our claim construction set forth in
the Institution Decision with respect to this term. Inst. Dec. 10. Therefore,
we construe, in light of the Specification, the claim term “a weakly-ionized
plasma that substantially eliminates the probability of developing an
electrical breakdown condition in the chamber” as “weakly-ionized plasma
that substantially eliminates the probability of developing a breakdown
condition when an electrical pulse is applied across the plasma thereby to
generate a strongly-ionized plasma.”
“without developing an electrical breakdown condition”
Claims 14 and 26 recite “[generating or forming] a strongly-ionized
plasma without developing an electrical breakdown condition in the
chamber.” Ex. 1201, 21:7–11, 22:11–15 (emphasis added). Neither the
Specification nor the original disclosure of the ’716 patent recites the claim
term “without developing an electrical breakdown condition in the
chamber.” Rather, they disclose a process that reduces or substantially
eliminates the possibility of developing an electrical breakdown condition in
the chamber.
For instance, the Specification of the ’716 patent discloses:
Forming the weakly-ionized or pre-ionized plasma 232
substantially eliminates the probability of establishing a
breakdown condition in the chamber when high-power pulses
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are applied between the cathode 204 and the anode 216. The
probability of establishing a breakdown condition is
substantially eliminated because the weakly-ionized plasma
232 has a low-level of ionization that provides electrical
conductivity through the plasma. This conductivity
substantially prevents the setup of a breakdown condition, even
when high power is applied to the plasma.
Id. at 6:16–25 (emphases added).
The partially ionized gas is also referred to as a weakly-ionized
plasma or a pre-ionized plasma 232 (FIG. 2B). The formation
of weakly-ionized plasma 232 substantially eliminates the
possibility of creating a breakdown condition when high-power
pulses are applied to the weakly-ionized plasma 232 as
described herein.
Id. at 11:41–47 (emphasis added).
As described herein, the formation of weakly-ionized plasma
232 substantially eliminates the possibility of creating a
breakdown condition when high-power pulses are applied to the
weakly-ionized plasma 232. The suppression of this
breakdown condition substantially eliminates the occurrence of
undesirable arcing between the anode 216 and the cathode 204.
Id. at 12:65–13:4 (emphases added).
In its Response, Patent Owner argues that “[r]educing, but not
eliminating, arcing . . . is not the same as transforming a weakly-ionized
plasma to a strongly-ionized plasma without developing an electrical
breakdown condition because it still admits of some arcing.” PO Resp. 30;
see Ex. 2004 ¶ 108. Patent Owner’s arguments, attempting to distinguish
the claims from Wang, focus on this distinction—reducing versus
eliminating. See id. at 1–5, 16–21, 26–30. Patent Owner, however, does not
explain adequately why one with ordinary skill in the plasma art would have
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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 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”).
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. Kortshagen testifies
that
[t]he probability of arcing can never be completely eliminated
in a realistic sputtering system application. This stems from
arcs being the potential result of stochastic electron density
fluctuations that may trigger an instability feedback mechanism
capable of creating a short circuit. Such density fluctuations
can result from the inherent stochastic motion of electrons, but
also from external factors such as cathode and anode erosion
over time or the flaking of deposited films from the chamber
walls, which all can lead to local enhancements of the electric
field. Because of the unpredictable nature of such events, there
is always a chance that a local electron density fluctuation can
become sufficiently high to create a short circuit and result in
an arc discharge.
Ex. 1221 ¶ 76 (emphases added). During his cross-examination,
Dr. Hartsough also recognized that “[o]ne can’t say that an arc would never
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14
occur . . . .” Ex. 1225, 188:14–189:3; see Reply 8–9; Ex. 1226, 129:17–22.
We credit this testimony of Dr. Kortshagen and Dr. Hartsough as it is
consistent with the Specification of the ’716 patent. Ex. 1201, 6:16–25,
11:41–47, 12:65–13:4.
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 232 substantially eliminates the
possibility of creating a breakdown condition when high-power pulses are
applied to the weakly-ionized plasma 232,” and “[t]he suppression of this
breakdown condition substantially eliminates the occurrence of undesirable
arcing between the anode 216 and the cathode 204.” Ex. 1201, 12:65–13:4
(emphases added).
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Given the disclosure in the Specification and the consistent testimony
of Dr. Kortshagen and Dr. Hartsough, 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 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.
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 patent 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
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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 ground of unpatentability in accordance with
the above-stated principles.
C. Obviousness Over Wang and Kudryavtsev
Petitioner asserts that each of the challenged claims is unpatentable
under 35 U.S.C. § 103 as obvious over the combination of Wang and
Kudryavtsev. Pet. 40–59. Petitioner explains how each limitation is
disclosed in or taught by the cited references, and provides an articulated
reasoning with rational underpinning to support combining the prior art
teachings. Id. Petitioner also relies on the Declarations of Dr. Kortshagen
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(Ex. 1202; Ex. 1221) to support its Petition and Reply. Patent Owner
responds that the cited combination does not disclose every claim element
(see, e.g., PO Resp. 26–30, 34–44), and asserts that there is insufficient
reason to combine the technical disclosures of Wang and Kudryavtsev (id. at
31–33), relying on the Declaration of Dr. Hartsough (Ex. 2004) to support its
Response.
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 Kudryavtsev, 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 ¶ 121; see Pet. 40–41. 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 ¶ 44.
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Kudryavtsev
Kudryavtsev discloses a multi-step ionization plasma process,
comprising the steps of exciting the ground state atoms to generate excited
atoms, and then ionizing the excited atoms. Ex. 1205, Abstract, Figs. 1, 6.
Figure 1 of Kudryavtsev, reproduced below with annotations added by
Petitioner (Pet. 22), illustrates the atomic energy levels during the slow and
fast stages of ionization.

As shown in annotated Figure 1 of Kudryavtsev, ionization occurs with a
“slow stage” (Fig. 1a) followed by a “fast stage” (Fig. 1b). During the initial
slow stage, direct ionization provides a significant contribution to the
generation of plasma ions (arrow Γ1e showing ionization (top line labeled
“e”) from the ground state (bottom line labeled “1”)). Dr. Kortshagen
explains that Kudryavtsev shows the rapid increase in ionization once
multi-step ionization becomes the dominant process. Ex. 1202 ¶¶ 70–71;
Pet. 21–23.
Specifically, Kudryavtsev discloses:
For nearly stationary n2 [excited atom density] values . . . there
is an explosive increase in ne [plasma density]. The subsequent
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increase in ne then reaches its maximum value, equal to the rate
of excitation . . . which is several orders of magnitude greater
than the ionization rate during the initial stage.
Ex. 1205, 31 (emphasis added). Kudryavtsev also recognizes that “in a
pulsed inert-gas discharge plasma at moderate pressures . . . [i]t is shown
that the electron density increases explosively in time due to accumulation of
atoms in the lowest excited states.” Id. at Abstract, Fig. 6.
Independent Claim 14
Petitioner explains how each limitation of claim 14 is disclosed in or
taught by the combination of Wang and Kudryavtsev. Pet. 40–47.
Petitioner contends that DC power supply 100 of Wang, which supplies
background power PB that generates a weakly-ionized plasma from a gas,
such as an argon feed gas, discloses the claimed step of ionizing a feed gas
in a chamber to forma weakly-ionized plasma. Id. at 40–42; Ex. 1204, 7:17–
31, 7:56–61, 4:5–8, Figs. 6, 7. Petitioner further contends that pulsed DC
power supply 80 of Wang, which supplies pulses (high power pulses PP) to
the weakly-ionized plasma, to generate a strongly-ionized plasma, discloses
the claimed step of supplying an electrical pulse, thereby generating a
strongly-ionized plasma. Pet. 43; Ex. 1204, 7:19–30, 7:61–62, Figs. 6, 7.
With respect to claim 14, the parties’ dispute mainly centers on:
(1) whether the cited combination teaches or suggests the “generating a
strongly-ionized plasma without developing an electrical breakdown
condition” limitation; (2) whether the cited combination teaches or suggests
the claimed “electrical pulse . . . that excites atoms in the weakly-ionized
plasma”; and (3) whether one of skill in the art would combine the technical
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disclosures of Wang and Kudryavtsev. We address each of these issues in
turn.
Generating a strongly-ionized plasma without developing an electrical
breakdown condition
Petitioner asserts that Wang discloses “generating a strongly-ionized
plasma without developing an electrical breakdown condition,” as recited in
claim 14. Pet. 42–43, 46–47. According to Petitioner, “Wang teaches that
maintaining the weakly-ionized plasma between the pulses reduces arcing,
or breakdown conditions.” Id. at 42 (citing Ex. 1204, 7:3–49; Ex. 1202
¶ 126). An annotated version of Figure 6 of Wang is reproduced below
(annotations by Petitioner, Pet. 11):

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,
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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
plasma need not be reignited thereafter, arcing will not occur during
subsequent applications of the background and peak power levels, PB and
PP.” Ex. 1202 ¶ 127; 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. 1, 16–21, 26–30. In this regard, Patent Owner
draws a distinction between reducing electrical breakdown conditions and
eliminating electrical breakdown conditions. Id. Patent Owner argues that
“[a]rcing is still possible when a pulse is applied across a pre-existing
plasma, particularly when there is a large, abrupt increase in the electric field
as would occur upon the sudden application of a power pulse, such as in the
transition Wang’s PB to PP.” Id. at 20–21 (citing Ex. 2004 ¶ 65). To support
Patent Owner’s contention, Dr. Hartsough testifies “Wang views arcing as a
problem that can be improved, but not eliminated, by having the plasma
maintained with a background fixed power. Note that even this does not
stop the plasma from arcing, but merely reduces arcing.” Ex. 2004 ¶ 64.
Dr. Hartsough continues, “Wang’s use of pre-ionization did not eliminate
arcing for his power pulses, it only reduced the likelihood of the same.” Id.
¶ 65.
Based on the evidence before us, we are not persuaded by Patent
Owner’s arguments and expert testimony. As noted in our claim
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construction above, we do not construe claim 14 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, 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. Id. at 7:47–55. Because the weakly-ionized
plasma exists in the chamber after ignition, the “chamber impedance
changes relatively little between the two power levels PB, PP,” and
“particulates produced by arcing are much reduced.” Id.
Dr. Kortshagen testifies that
Wang’s disclosure of the impedance changing relatively little
between the two power levels indicates to a person of ordinary
skill in the art that no arcing occurs when the high-power pulse
PP is applied to the weakly-ionized plasma (maintained by PB),
since any arcing would cause a drastic change in chamber
impedance as the plasma current short circuits.
Ex. 1221 ¶ 75; see Reply 7. Given the prior art disclosures and the evidence
before us, we credit Dr. Kortshagen’s testimony (Ex. 1202 ¶¶ 126–127, 136–
138; Ex. 1221 ¶¶ 74–79). Further still, the power supply operation
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parameters disclosed in Wang, fall within the broad ranges disclosed in the
’716 patent. See Ex. 1221 ¶¶ 29–30, Fig. 3; compare Ex. 1201, 6:55–64,
Fig. 4, with Ex. 1204, 7:13–25, 5:66–65, Fig. 6. We, thus, agree with
Dr. Kortshagen that one of ordinary skill in the art would recognize the
embodiment of Figure 6 of Wang discloses “how to create a strongly-ionized
plasma (through application of PP pulses) from a weakly-ionized plasma
(maintained by PB) without forming an arc.” Ex. 1221 ¶ 75; see id. ¶ 79.
Patent Owner also attempts to distinguish this limitation of claim 14
based on several arguments that import extraneous limitations into the
claims. For example, Patent Owner argues that Wang “does not solve the
problem of arcing during plasma initiation. Instead, Wang merely proposes
reducing the amount of arcing by keeping the plasma maintained so as not to
require re-ignition with each pulse.” PO Resp. 3 (citing Ex. 2004 ¶ 64)
(emphasis added). Patent Owner additionally argues that because Wang
does not disclose a magnitude for the peak density of ions, Wang does not
teach a strongly-ionized plasma at all. Id. at 5 (citing IPR2014-00818,
Ex. 2010, 212:20–22, 216:2–217:21, 154:23–155:15). The claims, however,
do not require either of these limitations. See supra Section II.A. As
discussed in our claim construction above, the claims do not require “no
arcing,” or “no electrical breakdown condition,” at ignition. See Reply 6–7
(“Wang’s discussion of arcing during plasma ignition is irrelevant to
whether arcing occurs when Wang energizes its weakly-ionized plasma into
a strongly-ionized plasma.”). There also is no requirement in the claims that
the strongly-ionized plasma has a particular magnitude.
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Given the evidence before us in the entire record, we determine that
Petitioner has demonstrated, by a preponderance of evidence, that Wang
discloses “generating a strongly-ionized plasma without developing an
electrical breakdown condition,” as recited in claim 14.
8

Electrical pulse that excites atoms in the weakly-ionized plasma
Petitioner asserts that the combination of Wang and Kudryavtsev
teaches an “electrical pulse . . . that excites atoms in the weakly-ionized
plasma, thereby generating a strongly-ionized plasma,” as recited in
claim 14. Pet. 43–46. According to Petitioner,
pulsed DC supply 80 [of Wang] . . . generates a train of voltage
pulses. . . . Application of these voltage pulses to Wang’s
cathode 14 and anode 24 produces Wang’s peak power pulses,
PP, which are applied to Wang’s weakly-ionized plasma . . . .
When one of Wang’s voltage pulses is applied, an electric field
is produced between the cathode 14 and the grounded anode 24.
Id. at 43 (citing Ex. 1204, 7:61–62, Fig. 7; Ex. 1202 ¶ 128). Petitioner
further asserts that “Wang generates . . . a high density plasma during
application of the peak power PP.” Id. at 40 (citing Ex. 1202 ¶ 121); 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.”).

8
Patent Owner also argues Kudryavtsev also does not teach this claim
limitation (see, e.g., PO Resp. 29); however, because we determine Wang
discloses this claim feature, we need not consider whether Kudryavtsev also
discloses this feature.
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According to Petitioner, “[b]ecause Wang’s power levels fall within
the ranges disclosed by the ‘716 Patent, Wang is as likely as is the ‘716
Patent to excite atoms within the weakly-ionized plasma.” Pet. 44 (citing
Ex. 1202 ¶ 131); see also Ex. 1202 ¶ 130 (“Wang discloses power levels that
fall within the ranges disclosed by the ‘716 Patent. In particular, Wang
discloses a pre-pulse power, PB, of 1 kW (within ‘716 Patent’s range of 0.1 –
100 kW) and a pulse power level of 1 MW (within ‘716 Patent’s range of
1kW – 10 MW).”) (citing Ex. 1204, 7:19–25). Further, Petitioner contends
that “if one of ordinary skill, applying Wang’s power levels did not
experience Kudryavtsev’s ‘explosive increase’ in plasma density, it would
have been obvious to adjust the operating parameters, e.g., increase the pulse
length and/or pressure, so as to trigger Kudryavtsev’s fast stage of
ionization,” which expressly explains the contribution of excited atom
generation to the ionization process. Pet. 44–45 (citing Ex. 1202 ¶ 132;
Ex. 1205, Abstract); id. at 21–24.
In its Response, Patent Owner argues that Wang “fails to teach or
suggest controlling voltage during [sputtering material from a target] or
when generating a high-density plasma.” PO Resp. 2; see id. at 17–21.
Patent Owner further argues that Wang “discloses a very different approach
to achieving a high density plasma.” Id. at 2 (citing Ex. 2004 ¶ 60); see
Ex. 2004 ¶ 60 (Dr. Hartsough testifies: “Wang does not control voltage (or
the resulting electric field) rise time for any purpose, and certainly not for
the purpose of achieving an increase in ionization rate.”) (emphasis added).
These arguments are not commensurate with the scope of claim 14, which
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does not recite a voltage pulse, let alone controlling such a pulse, as asserted
by Patent Owner. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (stating
that limitations not appearing in the claims cannot be relied upon for
patentability). Although Patent Owner argues that Wang does not disclose a
voltage pulse, claim 14 recites only an “electrical pulse”; both power pulses
and voltage pulses are electrical pulses. In any case, Petitioner relies on
“pulsed DC supply 80 [of Wang] that generates a train of voltage pulses” as
disclosing the claimed “electrical pulse.” Pet. 43 (citing Ex. 1204, 7:61–62,
Fig. 7) (emphasis added).
Given the evidence before us in the entire record, we determine that
Petitioner has demonstrated, by a preponderance of evidence, that the
combination of Wang and Kudryavtsev teaches an “electrical pulse . . . that
excites atoms in the weakly-ionized plasma, thereby generating a
strongly-ionized plasma,” as recited in claim 14.
Reasons to combine Wang and Kudryavtsev
Patent Owner contends that it would not have been obvious how to
combine Wang and Kudryavtsev, arguing that Wang’s sputtering apparatus
differs significantly from Kudryavtsev’s experimental apparatus. PO
Resp. 31–33. In particular, Patent Owner argues that “Kudryavtsev’s
experimental system involved a 2.5 cm diameter tube between two
electrodes spaced 52 cm apart and did not use magnets or magnetic fields,”
whereas “Wang . . . specifically discusses ‘[a] pulsed magnetron sputter
reactor.’” Id. at 31 (citing Ex. 2004 ¶ 102; Ex. 1204, 3:16–22). Patent
Owner continues, arguing that the “behaviors of charged particles (such as
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electrons and ions) in magnetic fields are vastly different from their
behaviors in the absence of magnetic fields,” and, thus, one of skill in the art
would not be motivated to apply the teachings of Kudryavtsev to Wang’s
system. Id. at 32 (citing Ex. 2004 ¶ 102). Those arguments are not
persuasive. “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). 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.” KSR, 550
U.S. at 420–21.
Petitioner relies on Kudryavtsev for the express teaching of excitation
of atoms. Pet. 44–45 (citing Ex. 1202 ¶ 132; Ex. 1205, Abstract); id. at 21–
24. Kudryavtsev states that because “the effects studied in this work are
characteristic of ionization whenever a field is suddenly applied to a weakly
ionized gas, they must be allowed for when studying emission mechanisms
in pulsed gas lasers, gas breakdown, laser sparks, etc.” Ex. 1205, 34
(emphasis added); see Ex. 1221 ¶ 52. Wang applies pulses that suddenly
generate an electric field. Ex. 1204, 7:61–63; see Ex. 1202 ¶ 133.
Dr. Kortshagen testifies that performing a fast stage of ionization (as
disclosed by Kudryavtsev) in Wang’s apparatus would have been a
combination of known techniques yielding the predictable results of
increasing the ionization rate and the degree of multi-step ionization. See
Ex. 1202 ¶ 132.
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Patent Owner has not explained persuasively why triggering a fast
stage of ionization in Wang’s magnetron sputtering apparatus (e.g., resulting
in excitation of atoms in the weakly-ionized plasma) would have been
beyond the level of ordinary skill, or why one with ordinary skill in the art
would not have had a reasonable expectation of success in combining the
teachings. In fact, as Petitioner points out, Mozgrin
9
applied Kudryavtsev’s
teachings of an “explosive increase” in plasma density to a magnetron
sputtering system similar to Wang’s.
10
Pet. 20–24, 44–45; Reply 4–5;
Ex. 1203, 401. Mozgrin cites to Kudryavtsev and discloses that in
“[d]esigning the unit, we took into account the dependences which had been
obtained in [Kudryavtsev] of ionization relaxation on pre-ionization
parameters, pressure, and pulse voltage amplitude.” Ex. 1203, 401. This
illustrates that one with ordinary skill in the art at the time of the invention
would not have found it uniquely challenging or beyond his or her skill to
apply the teachings of Kudryavtsev to magnetron sputtering systems, such as
Wang’s.

9
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).
10
Petitioner “identifies Mozgrin as an example of a person of ordinary skill
in the art looking to Kudryavtsev’s teachings in designing a plasma
sputtering system.” Reply 4 n.2; see also Okajima, 261 F.3d at 1355
(indicating the level of ordinary skill in the art also is reflected by the prior
art of record).
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Given the evidence before us, we determine that Petitioner has
demonstrated, by a preponderance of the evidence, that combining the
technical disclosures of Wang and Kudryavtsev would be merely a
predictable use of prior art elements according to their established
functions—an obvious improvement. See KSR, 550 U.S. at 417 (“[I]f a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond [his or her] skill.”).
Accordingly, for the reasons discussed above, we determine that
Petitioner has demonstrated, by a preponderance of evidence, that claim 14
would have been obvious in view of Wang and Kudryavtsev.
Independent Claim 26
Petitioner explains how each limitation of claim 26 is disclosed in or
taught by the combination of Wang and Kudryavtsev. Pet. 47–51.
Petitioner relies on Wang as disclosing the structural elements of claim 26—
an anode, a cathode, an ionization source, and a power supply. See id.
(citing Ex. 1204, 3:66–4:1, 4:5–6, 4:20–31, 5:23–27, 7:3–49, 7:58–62,
Figs. 1, 6, 7; Ex. 1205, Abstract; Ex. 1202 ¶¶ 139, 141–142, 144–145, 147–
148). Beyond the limitations discussed above with respect to claim 14 that
are similarly recited in claim 26, the parties additionally dispute whether the
cited combination teaches or suggests “a cathode that is positioned adjacent
to the anode,” as recited in claim 26.
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Patent Owner argues that floating shield 26 of Wang (see Ex. 1204,
Fig. 1, reproduced above) precludes a finding that the cathode is positioned
adjacent to the anode, as required by claim 26. PO Resp. 35. Patent Owner
continues that citations to Fu
11
and Chiang,
12
incorporated by reference in
Wang, further suggest that an interposed grounded shield would have been
the anode-cathode geometry that a person of ordinary skill in the art would
have looked to and would not meet the requirements of claim 26. Id. at 35–
36 (citing Ex. 2004 ¶ 110). Patent Owner also argues that the cited
references teach too large a gap between the anode and cathode for them to
be considered adjacent to each other. Id. at 36–38.
In its Reply, Petitioner argues that Patent Owner “presents no support
for arguing that placing a floating shield 26 partially between the two
electrodes would mean they are no longer adjacent.” Reply 12. In fact, as
noted by Petitioner, during his cross-examination, Dr. Hartsough
acknowledged that even when an object partially blocks an anode and
cathode, the unblocked portions are still “adjacent” to each other. See id. at
13 (citing Ex. 1222, 83:12–84:18; Ex. 1223, 75:23–76:8). Petitioner also
argues that, even if the exemplary gap distances were to be incorporated into
claim 26, Wang discloses a gap distance of 10 cm, which falls within the
range disclosed by the ’716 patent. Id.; Ex. 1201, 8:41–43; Ex. 2008, 6:66–
7:2, 14:37–50; Ex. 2004 ¶ 71.

11
U.S. Patent No. 6,306,265. See Ex. 1204, 1:47–51.
12
U.S. Patent App. No. 09/414,614, now U.S. Patent No. 6,398,929 (Ex.
2008). See Ex. 1204, 1:49–51.
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The ’716 patent provides no specific definition for “adjacent.” We are
not persuaded that the partial imposition of the grounding shield in Wang
renders the cathode and anode in Wang to be non-adjacent. Additionally, as
Dr. Hartsough admitted, he could not recall any prior art plasma system
design that did not have a cathode adjacent the anode. See Reply 14–15
(citing Ex. 1222, 54:22–55:8, 76:9–11, 77:6–9). We, thus, are further
persuaded that this feature is an element well-known to those of ordinary
skill in the art. See id.
Based on the evidence before us, we are persuaded that Petitioner has
demonstrated, by a preponderance of evidence, that claim 26 would have
been obvious in view of Wang and Kudryavtsev.
Claims 16, 17, 30: rise time and magnitude of the electrical pulse
Each of claims 16 and 17, which depend from claim 14, recites “at
least one of a rise time and magnitude of the electrical pulse supplied across
the weakly-ionized plasma is selected to” achieve a particular result.
Ex. 1201, 21:16–24. In claim 16, the result is “increas[ing] a density of the
weakly-ionized plasma.” Id. at 21:16–19. In claim 17, the result is
“excit[ing] atoms in the weakly-ionized plasma to generate secondary
electrons that increase an ionization rate of the weakly-ionized plasma.” Id.
at 21:20–24. Claim 30, which depends from claim 26, similarly recites “at
least one of a rise time and an amplitude of the electrical field is chosen to
increase an ionization rate of the weakly-ionized plasma.” Id. at 22:29–32.
As previously discussed, Petitioner asserts that “Wang generates . . . a
strongly-ionized plasma with the peak power pulses, PP.” Pet. 40 (citing
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Ex. 1202 ¶ 121); 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, “pulses disclosed in Wang have a magnitude and a rise time” and
are applied to the weakly-ionized plasma. Pet. 52 (citing Ex. 1202 ¶ 153);
id. at 43 (citing Ex. 1202 ¶ 128). With respect to each of claims 16, 17, and
30, Petitioner asserts that because Wang’s pulse produced the claimed result,
they are thus “selected” to achieve the result, as claimed. Id. at 52–55
(citing Ex. 1202 ¶¶ 153–156, 158–160, 162–163).
Patent Owner argues that Petitioner’s arguments with respect to
claims 16, 17, and 30 are conclusory and not supported by Wang. PO
Resp. 38–41. Patent Owner continues that merely because an applied
electrical pulse has an associated rise time and amplitude, as in Wang, that
does not mean that the rise time or amplitude was somehow selected to
achieve the result of claims 16, 17, or 30. Id.
Patent Owner’s arguments are not persuasive. Wang selects pulse
characteristics with the goal of increasing the density of the weakly-ionized
plasma. See Ex. 1204, 7:13–30. Kudryavtsev discloses that, when applying
an electrical pulse to generate a strongly-ionized plasma from a
weakly-ionized plasma, the ionization rate will increase. Ex. 1205, 31–32;
see Ex. 1221 ¶¶ 53, 117–118. Given these disclosures, we are persuaded
that one of ordinary skill in the art would have understood that the
parameters of the rise time and magnitude/amplitude of an electrical pulse
could be controlled to increase the ionization rate, and that it would have
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been obvious to select the rise time and/or magnitude/amplitude to achieve
the goals of the cited references.
Based on the evidence before us, we are persuaded that Petitioner has
demonstrated, by a preponderance of evidence, that the combination of
Wang and Kudryavtsev discloses selecting at least one of a rise time and
magnitude of the electrical pulse to achieve the claimed results. We, thus,
are persuaded that Petitioner has demonstrated, by a preponderance of
evidence, that claims 16, 17, and 30 would have been obvious in view of
Wang and Kudryavtsev.
Claims 28, 29: gap between the anode and cathode
Claim 28 depends from claim 26, and recites “wherein the anode and
cathode form a gap there between.” Ex. 1201, 22:23–24. Claim 29 depends
from claim 28, and recites “wherein a dimension of the gap . . . is chosen to
increase an ionization rate of the excited atoms in the weakly-ionized
plasma.” Id. at 22:25–28.
Regarding claim 28, Patent Owner argues that “[i]nasmuch as the
combination of Wang and Kudryavtsev does not suggest a cathode that is
positioned adjacent to the anode, that combination cannot suggest a cathode
that is positioned adjacent to the anode ‘form[ing] a gap there between.’”
PO Resp. 41. For the reasons discussed above, Patent Owner’s argument
that the combination does not teach the anode and cathode positioned
adjacent each other is not persuasive. Additionally, we agree with Petitioner
that including a gap between the cathode and anode was within skill level of
those of ordinary skill in the art. Pet. 57–58 (noting that arranging the anode
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and cathode to define a gap “would involve nothing more than . . .
rearranging well-known components”); see also Reply 15–16 (citing
Ex. 1222, 102:9–15 (Dr. Hartsough testifying that an anode in contact with a
cathode would cause the system to “short out.”); id. at 138:15–18
(Dr. Hartsough testifying that “[h]aving a space between the anode and
cathode was well[-]known to a person of ordinary skill in the art at the time
of the ’716 Patent.”)). We, thus, also are not persuaded by Patent Owner’s
argument with respect to claim 28.
Regarding claim 29, Patent Owner argues that “the dimension of the
gap . . . be chosen to increase the ionization rate of excited atoms.” Id. at 42.
Patent Owner’s arguments also are not persuasive with respect to claim 29.
As discussed above, and even though claim 29 does not recite a particular
gap dimension, Wang discloses a gap dimension overlapping with that
disclosed in the embodiments of the ’716 patent. See Reply 17 (citing
PO Resp. 23, 36). Further, we are persuaded based on the record before us,
that one of ordinary skill in the art would have been motivated to adjust the
basic anode-cathode geometry (including e.g., the gap dimension) to arrive
at an increased ionization rate of the excited atoms in the weakly-ionized
plasma. See Reply 19–20 (citing Ex. 1204, 5:7–8, 5:40–42; Ex. 1205, 31;
Ex. 1221 ¶¶ 120, 124–125; Ex. 1222, 138:9–14, 171:10–172:12, 176:8–
178:1).
Based on the evidence before us, we are persuaded that Petitioner has
demonstrated, by a preponderance of evidence, that the combination of
Wang and Kudryavtsev discloses the recited gap dimension, and choosing
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the same to increase an ionization rate of the excited atoms in the
weakly-ionized plasma. We, thus, are persuaded that Petitioner has
demonstrated, by a preponderance of evidence, that claims 28 and 29 would
have been obvious in view of Wang and Kudryavtsev.
Claims 15, 18, 25, 27, 31, and 32
Patent Owner does not provide arguments with respect to any
additional limitations added by dependent claims 15, 18, 25, 27, 31, and 32.
We have reviewed Petitioner’s arguments and evidence regarding these
claims (Pet. 51, 55–57; Ex. 1202 ¶¶ 151, 165–167, 169–170, 172; Ex. 1204,
4:23–31, 4:49–51, 7:57–63, Fig. 7; Ex. 1201, 1:39–41), and, given the
evidence in the record before us, we determine that Petitioner has
demonstrated, by a preponderance of evidence, that the combination of
Wang and Kudryavtsev teaches each of claims 15, 18, 25, 27, 31, and 32.
III. CONCLUSION
For the foregoing reasons, we determine that Petitioner has
demonstrated, by a preponderance of the evidence, that claims 14–18 and
25–32 of the ’716 patent are unpatentable under 35 U.S.C. § 103 as obvious
in view of Wang and Kudryavtsev.
IV. ORDER
Accordingly, it is:
ORDERED that claims 14–18 and 25–32 of U.S. Patent No.
7,604,716 B2 are held unpatentable; and
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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.

IPR2014-00807
Patent 7,604,716 B2

39
For PATENT OWNER:
Tarek Fahmi
tarek.fahmi@ascendalaw.com
Gregory J. Gonsalves
gonsalves@gonsalveslawfirm.com
Bruce J. Barker
bbarker@chsblaw.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
IPR2014-00807
Patent 7,604,716 B2

40
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