Trials@uspto.gov
`571.272.7822
`
`
` Paper No. 22
`
`Entered: February 12, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`DANIEL L. FLAMM,
`Patent Owner.
`
`____________
`
`Case IPR2016-01512
`Patent RE40,264 E
`____________
`
`
`
`Before MICHAEL R. ZECHER, CHRISTOPHER L. CRUMBLEY, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
` Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`

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`IPR2016-01512
`Patent RE40,264 E
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`
`I. INTRODUCTION
`
`Petitioner, Samsung Electronics Co., Ltd. (“Samsung”), filed a
`Petition requesting an inter partes review of claims 27, 31, 32, 34, 37, 40,
`41, 44, 47, 48, and 50 of U.S. Patent No. RE40,264 E (Ex. 1001, “the ’264
`patent”). Paper 1 (“Pet.”). Patent Owner, Daniel L. Flamm (“Flamm”),
`filed a Preliminary Response. Paper 5. Taking into account the arguments
`presented in Flamm’s Preliminary Response, we determined that the
`information presented in the Petition established that there was a reasonable
`likelihood that Samsung would prevail in challenging claims 27, 31, 32, 34,
`37, 40, 41, 44, 47, 48, and 50 of the ’264 patent as unpatentable under
`35 U.S.C. § 103(a). Pursuant to 35 U.S.C. § 314, we instituted this inter
`partes review on February 14, 2017, as to all of the challenged claims.
`Paper 6 (“Dec. on Inst.”).
`During the course of trial, Flamm filed a Patent Owner Response
`(Paper 9, “PO Resp.”), and Samsung filed a Reply to the Patent Owner
`Response (Paper 12, “Pet. Reply”). An oral hearing was held on October 12,
`2017, and a transcript of the hearing is included in the record. Paper 21
`(“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of
`claims 27, 31, 32, 34, 37, 40, 41, 44, 47, 48, and 50 of the ’264 patent. For
`the reasons discussed below, we hold that Samsung has demonstrated by a
`preponderance of the evidence that these claims are unpatentable under
`§ 103(a).
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`
`A. Related Matters
`
`The parties represent that the ’264 patent is at issue in a district court
`case captioned Flamm v. Samsung Electronics Co., No. 1:15-cv-613-LY
`(W.D. Tex.), which was transferred to the U.S. District Court for the
`Northern District of California on April 27, 2016, and then re-captioned No.
`5:16-cv-2252-BLF (N.D. Cal.). Pet. 1; Paper 4, 2. Samsung further
`represents that the ’264 patent was at issue in a number of inter partes
`review proceedings filed by a different petitioner; however, the Board only
`granted institution in two proceedings, each of which has since terminated
`following settlement. See Pet. 1 n.1.
`In addition to this Petition, Samsung filed another petition challenging
`the patentability of claims 13–26, 64, and 65 of the ’264 patent in Case
`IPR2016-01510. Pet. 1. We denied institution of an inter partes review in
`that proceeding because the information presented in the Petition did not
`establish that there was a reasonable likelihood that Samsung would prevail
`in challenging any of claims 13–26, 64, and 65 of the ’264 patent as
`unpatentable under § 103(a). Samsung Elecs. Co. v. Flamm, Case IPR2016-
`01510 (PTAB Feb. 14, 2017) (Paper 6); see also Samsung Elecs. Co. v.
`Flamm, Case IPR2016-01510 (PTAB Apr. 14, 2017) (Paper 8) (denying
`Samsung’s Request for Rehearing). Additional petitions challenging the
`patentability of certain subsets of claims of the ’264 patent were filed by
`other petitioners, some of which were instituted and remain pending before
`the Board. See Cases IPR2017-00279, IPR2017-00280, IPR2017-00281,
`IPR2017-00282, IPR2017-01072.
`
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`
`B. The ’264 Patent
`
`The ’264 patent, titled “Multi-Temperature Processing,” reissued
`April 29, 2008, from U.S. Patent Application No. 10/439,245 (“the ’245
`application”), filed on May 14, 2003. Ex. 1001, at [54], [45], [21], [22].
`The ’264 patent is a reissue of U.S. Patent No. 6,231,776 B1 (“the ’776
`patent”), which issued on May 15, 2001, from U.S. Patent Application
`No. 09/151,163 (“the ’163 application”), filed on September 10, 1998. Id. at
`[64]. The ’264 patent is directed to a method “for etching a substrate in the
`manufacture of a device,” where the method “provide[s] different processing
`temperatures during an etching process or the like.” Id. at [57]. The
`apparatus used in the method is shown in Figure 1, reproduced below.
`
`
`Figure 1 depicts a substrate (product 28, such as a wafer to be etched) on a
`substrate holder (product support chuck or pedestal 18) in a chamber
`(chamber 12 of plasma etch apparatus 10). Id. at 3:24–25, 3:32–33, 3:40–
`41.
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`
`Figures 6 and 7, reproduced below, depict a temperature-controlled
`substrate holder and temperature control system.
`
`
`
`Figures 6 and 7 depict temperature-controlled fluid flowing through
`substrate holder (600, 701), guided by baffles 605, where “[t]he fluid [is]
`used to heat or cool the upper surface of the substrate holder.” Ex. 1001,
`14:28–63, 16:5–67. Figure 6 also depicts heating elements 607 underneath
`the substrate holder, where “[t]he heating elements can selectively heat one
`or more zones in a desirable manner.” Id. at 15:10–26. Referring to Figure
`7, the operation of the temperature control system is described as follows:
`The desired fluid temperature is determined by comparing the
`desired wafer or wafer chuck set point temperature to a measured
`wafer or wafer chuck temperature . . . . The heat exchanger, fluid
`flow rate, coolant-side fluid temperature, heater power, chuck,
`etc. should be designed using conventional means to permit the
`heater to bring the fluid to a setpoint temperature and bring the
`temperature of
`the chuck and wafer
`to predetermined
`
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`
`temperatures within specified time intervals and within specified
`uniformity limits.
`Id. at 16:36–39, 16:50–67.
`An example of a semiconductor substrate to be patterned is shown in
`Figure 9, reproduced below.
`
`
`Figure 9 depicts substrate 901 having a stack of layers including oxide layer
`903, polysilicon layer 905, tungsten silicide layer 907, and photoresist
`masking layer 909 with opening 911, from the treatment method shown in
`Figure 10, reproduced below. Ex. 1001, 17:58–18:57.
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`
`
`Figure 10 depicts the tungsten silicide layer being etched between
`points B and D at a constant temperature; the polysilicon layer being
`exposed between Points D and E; the polysilicon layer being etched at a
`constant temperature beyond point E; and the resist being ashed beyond
`Point I. Ex. 1001, 18:58–19:64. The plasma’s optical emission at 530
`nanometers is monitored to determine when there is breakthrough to the
`polysilicon layer (Point D) and a lower etch temperature is required to etch
`the polysilicon layer (Point E). Id. at 19:8–24, 19:45–52.
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`
`C. Illustrative Claim
`
`Of the challenged claims, claims 27 and 37 are the only independent
`
`claims at issue. Independent claim 27 is directed to a method of etching a
`substrate in the manufacture of a device, whereas independent claim 37 is
`directed to a method of processing a substrate during the manufacture of a
`device. Claims 31, 32, and 34 directly depend from independent claim 27;
`and claims 40, 41, 44, 47, 48, and 50 directly depend from independent
`claim 37. Independent claim 27 is illustrative of the challenged claims and
`is reproduced below:
`27. A method of etching a substrate in the manufacture of a
`device, the method comprising:
`heating a substrate holder to a first substrate holder
`temperature with a heat transfer device, the substrate
`holder having at least one temperature sensing unit,
`placing a substrate having a film thereon on the substrate
`holder in a chamber;
`etching a first portion of the film at a selected first substrate
`temperature; and
`etching a second portion of the film at a selected second
`substrate temperature, the selected second substrate
`temperature being different from the selected first
`substrate temperature;
`wherein substrate temperature is changed from the selected
`first substrate temperature to the selected second substrate
`temperature, using a measured substrate temperature,
`within a preselected time interval for processing, and at
`least the first substrate temperature or the second substrate
`temperature, in single or in combination, is above room
`temperature.
`Ex. 1001, 22:8–28 (italics omitted).
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`
`D. Prior Art Relied Upon
`
`Samsung relies upon the following prior art references:
`Inventor or
`Patent or
`Relevant Dates
`Applicant1
`Publication No.
`Kadomura
`U.S. Patent No.
`6,063,710
`U.S. Patent No.
`5,151,871
`U.S. Patent No.
`4,913,790
`U.S. Patent No.
`5,219,485
`EP Patent Pub.
`No. 0272140 A2
`
`issued May 16, 2000,
`filed Feb. 21, 1997
`issued Sept. 29, 1992,
`filed June 15, 1990
`issued Apr. 3 1990,
`filed Mar. 21, 1989
`issued June 15, 1993,
`filed Oct. 17, 1991
`published June 22, 1988,
`filed Dec. 18, 1987
`
`Exhibit
`No.
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`Matsumura
`
`Narita
`
`Wang
`(“Wang I”)
`Wang
`(“Wang II”)
`
`
`
`E. Instituted Grounds of Unpatentability
`
`We instituted a trial based on the asserted grounds of unpatentability
`
`(“grounds”) set forth in the table below. Dec. on Inst. 32.
`References
`Basis
`Challenged Claims
`Kadomura and Matsumura
`§ 103(a) 27, 32, 37, and 40
`Kadomura, Matsumura, and Narita
`§ 103(a) 31 and 50
`Kadomura, Matsumura, and Wang I
`§ 103(a) 27, 34, 37, 41, and 44
`Kadomura, Matsumura, Wang I, and
`§ 103(a) 47 and 48
`Wang II
`
`
`1 For clarity and ease of reference, we only list the first named inventor or
`applicant.
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`
`II. ANALYSIS
`
`A. Claim Construction
`
`In the Decision on Institution, we explained the standard of claim
`construction that applies to this proceeding. Dec. on Inst. 9–10. That is, the
`term of a patent grant begins on the date on which the patent issues and ends
`twenty (20) years from the date on which the application for the patent was
`filed in the United States, “or, if the application contains a specific reference
`to an earlier filed application or applications under section 120, 121, 365(c),
`or 386(c), from the date on which the earliest such application was filed.”
`35 U.S.C. § 154(a)(2) (2012 & Supp. III 2015). The earliest patent
`application referenced for the benefit of priority under 35 U.S.C. § 120 for
`the ’264 patent was filed on December 4, 1995, and the patent has no term
`extensions. The term of the ’264 patent, therefore, expired no later than
`December 4, 2015. Neither party contested this conclusion during trial.
`Because we conclude that the term of the ’264 patent expired prior to
`the filing of the Petition, we construe the claims of the ’264 patent under the
`standard applicable to expired patents. For claims of an expired patent, our
`claim interpretation is similar to that of a district court. See In re Rambus
`Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). “In determining the meaning of the
`disputed claim limitation, we look principally to the intrinsic evidence of
`record, examining the claim language itself, the written description, and the
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips
`v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc)). There
`is, however, a “heavy presumption” that a claim term carries its ordinary and
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`customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
`1366 (Fed. Cir. 2002).
`During the course of trial, the parties did not propose constructions for
`any claim terms recited in the challenged claims of the ’264 patent. Because
`there is no dispute between the parties regarding claim construction, we need
`not construe explicitly any claim term of the ’264 patent. See, e.g., Nidec
`Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
`(Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy,
`and only to the extent necessary to resolve the controversy.’” (quoting Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`
`B. Earliest Priority Date for the Challenged Claims of the ’264 Patent
`
`As we explain above, the ’264 patent reissued from the ’245
`
`application, filed on May 14, 2003. Ex. 1001, at [21], [22]. The ’245
`application is a reissue of the ’776 patent, which issued May 15, 2001, from
`the ’163 application, which was filed September 10, 1998. Id. at [64].
`The ’163 application is a continuation-in-part of the following two
`applications: (1) U.S. Provisional Application No. 60/058,650 (“the ’650
`provisional application”), filed on September 11, 1997; and (2) U.S. Patent
`Application No. 08/567,224 (“the ’224 application”), filed on December 4,
`1995. Id. at [60], [63], 1:11–15.
`
`Samsung contends that Flamm may only claim the benefit of the filing
`date of the ’650 provisional application (i.e., September 11, 1997) because
`that is the earliest filed application in the priority chain that includes
`sufficient written description support for certain limitations recited in the
`challenged claims. Pet. 8–9. Relying upon the testimony of its Declarant,
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`Dr. Stanley Shanfield, Samsung explains how the ’224 application fails to
`disclose the following: (1) changing the substrate holder temperature from a
`first substrate temperature to a second substrate temperature in a preselected
`time interval, as required by independent claims 27 and 37; and (2) two
`separate temperature sensors, as required by independent claim 37. Id. at 9–
`10 (citing Ex. 1005, 45–46;2 Ex. 1002 ¶¶ 22–24). Consequently, Samsung
`asserts that, because the ’224 application does not provide sufficient written
`description support for certain limitations required by independent claims 27
`and 37, the challenged claims only are entitled to the priority date of the
`’650 provisional application (i.e., September 11, 1997). See id.
`Flamm does not dispute that the priority date of the challenged claims
`of the ’264 patent is the September 11, 1997 filing date of the ’650
`provisional application. Consequently, because all the references that serve
`as the basis of the grounds instituted in this proceeding were filed before
`September 11, 1997, they qualify as prior art to the challenged claims of the
`’264 patent.
`C. Obviousness Based on the Combined Teachings of
`Kadomura and Matsumura
`Samsung contends that claims 27, 32, 37, and 40 are unpatentable
`
`under § 103(a) over the combination of Kadomura and Matsumura. Pet. 19–
`47. Samsung explains how this proffered combination purportedly teaches
`the subject matter of each challenged claim, and asserts that a person of
`ordinary skill in the art would have had a sufficient reason to combine or
`
`
`2 All references to the page numbers in the ’224 application refer to the page
`numbers inserted by Samsung at the bottom, left-hand corner of each page in
`Exhibit 1005.
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`
`modify the teachings of the references. Id. Samsung also relies upon the
`Declaration of Dr. Shanfield to support its positions. Ex. 1002 ¶¶ 42–83. In
`its Patent Owner Response, Flamm presents a number of arguments with
`respect to independent claims 27 and 37. PO Resp. 3–23. Flamm relies
`upon his own testimony, the Declaration of Daniel L. Flamm,
`Sc.D., to support his positions. Ex. 2001 ¶¶ 8–24.
`
`We begin our analysis with the principles of law that generally apply
`to a ground based on obviousness, followed by an assessment of the level of
`skill in the art, proceeded by brief overviews of Kadomura and Matsumura,
`and then we address the parties’ contentions with respect to independent
`claims 27 and 37.
`
`1. Principles of Law
`
`A claim is unpatentable under § 103(a) if the differences between the
`claimed subject matter and the prior art are such that the subject matter, as a
`whole, would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of skill in
`the art; and (4) when in evidence, so-called secondary considerations.
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We analyze this
`asserted ground based on obviousness with the principles identified above in
`mind.
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`
`2. Level of Skill in the Art
` There is evidence in the record before us that enables us to determine
`the knowledge level of a person of ordinary skill in the art. Samsung’s
`declarant, Dr. Shanfield, testifies that a person of ordinary skill in the art as
`of September 1997 would be an individual who possesses the following:
`(i) a Bachelor’s degree in engineering, physics, chemistry,
`materials science, or a similar field, and three or four years of
`work experience in semiconductor manufacturing or related
`fields[;] or (ii) a Master’s degree in engineering, physics,
`chemistry, materials science, or a similar field[,] and two or three
`years of work experience of work experience in semiconductor
`manufacturing or related fields[].
`Ex. 1002 ¶ 18. According to Dr. Shanfield, “[m]ore education can
`supplement practical experience and vice versa.” Id. Conversely, the named
`inventor of the ’264 patent, Dr. Flamm, does not offer an assessment of the
`level of skill in the art as of September 1997, nor does Dr. Flamm explicitly
`state his intent to adopt Dr. Shanfield’s assessment. See generally Ex.
`2001.3 Given Dr. Flamm’s silence on this matter, we adopt Dr. Shanfield’s
`assessment because it is consistent with the ’264 patent and the asserted
`prior art, and apply it to our obviousness evaluation below.
`
`
`3 Although Dr. Flamm’s failure to assess or explicitly adopt a level of skill in
`the art as of September 1997 is problematic, we do not disregard his
`testimony for this reason alone. We do not credit the relevant portions of
`Dr. Flamm’s testimony for the reasons that we discuss in this Final Written
`Decision. Dr. Flamm’s failure to specify the level of skill in the art upon
`which his testimony is based is an additional factor that weighs against
`crediting his testimony. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed.
`Cir. 2010) (holding that the Board has discretion to give more weight to the
`testimony of one declarant over another “unless no reasonable trier of fact
`could have done so”).
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`
`3. Kadomura Overview
`
`Kadomura generally relates to a dry etching method used primarily for
`the production of semiconductor devices and, in particular, to a dry etching
`method and apparatus that provides compatibility for anisotropic fabrication
`and high selectivity. Ex. 1006, 1:6–10. According to Kadomura, one
`objective of the disclosed dry etching method is to apply an etching
`treatment that includes a plurality of steps to a specimen within the same
`processing apparatus, wherein the temperature of the specimen is changed
`between etching in a first step and etching in a second step. Id. at 2:65–3:5.
`Because the disclosed dry etching method conducts each of the etching
`treatments in the same processing apparatus, the time for changing the
`specimen temperature between the steps may be shortened. Id. at 4:46–49.
`Moreover, by conducting the change of specimen temperature within a short
`period of time, dry etching treatment may be applied without deteriorating
`the throughput. Id. at 4:49–54.
`Kadomura discloses three embodiments, each of which applies its dry
`etching method in a different manner. Ex. 1006, 5:44–56, Figs. 1A–1C, 2A–
`2C, 3A–3C. In the third embodiment discussed in relation to Figures 3A–
`3C, Kadomura discloses a method of fabricating polysilicon on an SiO2
`layer having a high step. Id. at 9:36–10:27. The main etching in the first
`step is applied at a low temperature (i.e., -30ºCelsius (“C”)), whereas the
`overetching in the second step is applied at a much higher temperature (i.e.,
`50ºC) within a short period of time of about fifty (50) seconds. Id. at 9:54–
`62, 10:11–27. According to Kadomura, the change in temperature of
`specimen W is controlled by “the cooling means and the heater disposed to
`the stage 12.” Id. at 10:7–10. The functioning of the cooling means is
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`controlled by thermometer 18, which is “connected for measuring the
`temperature of the specimen W.” Id. at 11:48–51, 12:36–47.
`
`4. Matsumura Overview
`
`Matsumura generally relates to heat-processing a semiconductor
`wafer and, in particular, to controlling temperatures of the semiconductor
`wafer when it is heated or cooled. Ex. 1007, 1:8–13. According to
`Matsumura, one objective of the disclosed invention is to provide a “method
`of heat-processing semiconductor devices whereby temperatures of the
`semiconductor devices can be controlled at devices-heating and -cooling
`times so as to accurately control their thermal history curve.” Id. at 2:60–65.
`Matsumura discloses applying the method to plasma etching when it states
`that, although “the present invention has been applied to the adhesion and
`baking processes for semiconductor wafers in the above-described
`embodiments . . . , it can also be applied to any of the ion implantation,
`[chemical vapor deposition (‘CVD’)], etching and ashing processes.” Id. at
`10:3–7.
`Figure 5A, reproduced below, is a schematic diagram of an
`embodiment for heat-processing a substrate (wafer W) on a substrate holder
`(wafer-stage 12, which includes upper plate 13 and conductive thin film 14)
`in chamber 11.
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`
`As shown in Figure 5A, adhesion unit 42 along with control system 20
`measures the temperature of thin film 14 deposited on the underside of upper
`plate 13 by using thermal sensor 25. Ex. 1007, 5:13–17, 5:32–47, 5:67–6:4,
`6:45–50. Control system 20 sends signals (SM) to power supply circuit 19
`to heat semiconductor wafer W on upper plate 13 by conductive thin film
`14, and sends signals (SC) to cooling system 23 to control the amount of
`coolant supplied to jacket 22. Id. at 5:52–6:32, Figs. 5A, 5B.
`Inside the control system is a “recipe,” such as that shown in Figure 9,
`reproduced below.
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`
`
`Figure 9 depicts a recipe with a thermal history curve showing temperature
`as a function of time. Ex. 1007, 4:42–43. At a given time (or pulse), the
`control system measures the substrate holder temperature with thermal
`sensor 25, compares this measurement to that of the recipe shown in Figure
`9, and either (1) sends a signal (SM) to power supply circuit 19 to heat the
`substrate (wafer W) (e.g., heating wafer W from 20ºC to 90ºC within 60
`seconds); (2) sends a signal (SC) to cooling system 23 to cool the substrate
`by allowing jacket 22 arranged under stage 12 to exchange heat with thin
`film 14 (e.g., cooling wafer W from 140ºC to 20ºC within 60 seconds); or
`(3) sends no signal and waits for the next measurement time (e.g., holding
`the temperature of wafer W at 140ºC for 30 seconds). Id. at 5:52–6:32, Figs.
`5A, 5B.
`
`5. Claims 27 and 37
`
`Samsung contends that Kadomura’s dry etching apparatus and method
`
`teaches all the limitations recited in independent claim 27, except “the
`substrate holder having at least one temperature sensing unit,” and changing
`from a first substrate temperature to a second substrate temperature “using a
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`measured substrate temperature, within a preselected time interval for
`processing.” Pet. 19–33. With respect to “the substrate holder having at
`least one temperature sensing unit,” Samsung contends that Kadomura in
`combination with Matsumura teaches or suggests this limitation. Id. at 19.
`Samsung argues that, although Kadomura discloses that thermometer 18
`measures the temperature of specimen W, it does not disclose explicitly
`whether this thermometer is part of stage 12. Id. at 20 (citing Ex. 1006,
`11:49–50, Fig. 4). Relying on the testimony of Dr. Shanfield, Samsung
`argues that Figure 4 of Kadomura would have suggested to one of ordinary
`skill in the art that thermometer 18 may be part of stage 12. Id. at 21 (citing
`Ex. 1002 ¶ 47).
`Alternatively, Samsung argues that Matsumura’s sensor 25 is attached
`to stage 12 and is used to measure the temperature of thin film 14. Pet. 21
`(citing Ex. 1007, 5:68–6:4, 7:20–24). Relying on the testimony of
`Dr. Shanfield, Samsung asserts that it would have been obvious to one of
`ordinary skill in the art to modify Kadomura’s stage 12 to include
`Matsumura’s sensor 25 in order to measure the temperature of the stage. Id.
`at 22–23 (citing Ex. 1002 ¶¶ 43, 49, 50). According to Samsung, this
`proffered combination would predictably result in better control of the
`heating and cooling process, as well as allow for measuring the temperature
`difference between Kadomura’s specimen W and stage 12. Id.
`With respect to changing from a first substrate temperature to a
`second substrate temperature “using a measured substrate temperature,
`within a preselected time interval for processing,” Samsung contends that
`Kadomura in combination with Matsumura teaches or suggests this
`limitation. Pet. 26. Samsung argues that Kadomura’s dry etching method
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`involves a first or main etching step applied at -30ºC, and a second or
`overetching step applied at 50ºC that occurs in a short period of time of
`about 50 seconds. Id. (citing Ex. 1006, 9:36–10:27). Samsung further
`argues that Kadomura’s thermometer 18 reads the temperature of specimen
`W and functions to control both the cooling means and heater so that the
`temperature reading of specimen W changes from a first to a second
`temperature “using a measured substrate temperature.” Id. at 27 (citing
`Ex. 1006, 11:48–51, 12:36–47, Fig. 4).
`Samsung turns to Matsumura’s temperature control system that uses
`predetermined recipes to heat or cool an object over a predetermined period
`of time to teach changing from a first substrate temperature to a second
`substrate temperature “within a preselected time interval for processing.”
`Pet. 27–29 (citing Ex. 1007, 3:1–7). For example, Samsung argues that
`Figure 9 of Matsumura shows a control recipe with a temperature change
`from 20°C to 90°C within 60 seconds. Id. at 29 (citing Ex. 1007, 8:56–9:19,
`Fig. 9). Alternatively, Samsung also argues that Matsumura’s disclosure of
`detecting the temperature of the wafer prior to changing the temperature
`according to the recipe teaches changing from a first to a second temperature
`“using a measured substrate temperature.” Id. at 30 (citing Ex. 1007, 9:16–
`23).
`
`Relying on the testimony of Dr. Shanfield, Samsung asserts that it
`would have been obvious to one of ordinary skill in the art to modify
`Kadomura’s dry etching method by incorporating the use of Matsumura’s
`control recipes in order to control the temperature of specimen W
`(e.g., by changing the temperature of specimen W from a first temperature to
`a second temperature in a “preselected time interval for processing”).
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`Pet. 31–32 (citing Ex. 1002 ¶¶ 43, 60, 61). According to Samsung, one of
`ordinary skill in the art would have recognized that such a modification
`would improve the flexibility of Kadomura’s dry etching apparatus by
`allowing specimen W to be set to different temperatures in a controlled
`manner and allowing the system to process several different types of
`materials and substrates. Id. at 32. In addition, Samsung argues that one of
`ordinary skill in the art would have recognized that measuring and using the
`temperature of Kadomura’s wafer W—“using the measured substrate
`temperature”—during the heating and cooling process provides for the
`ability to better control (1) the wafer temperature and (2) the heating and
`cooling process. Id. at 32–33.
`Turning to independent claim 37, Samsung contends that Kadomura
`teaches all the limitations recited in this claim, except “a substrate holder
`temperature sensor,” and changing from a first substrate temperature to a
`second substrate temperature “within a preselected time period to process
`the film.” Pet. 35–46. With the exception of “a substrate holder temperature
`sensor,” Samsung relies upon essentially the same analysis with respect to
`independent claim 27 discussed above to support its assertion that
`independent claim 37 would have been obvious over the combined teachings
`of Kadomura and Matsumura. Compare id. at 19–33, with id. at 35–46.
`Samsung, however, turns to Matsumura’s sensor 25 to teach or suggest
`“a substrate holder temperature sensor.” Id. at 40–41 (citing Ex. 1007, 7:19–
`26, Fig. 10).
`In its Patent Owner Response, Flamm argues the following: (1)
`Samsung fails to provide a sufficient rationale to combine the teachings of
`Kadomura and Matsumura; (2) both Kadomura and Matsumura teach away
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`from the claimed invention; and (3) modifying Kadomura’s dry etching
`method and apparatus with Matsumura’s control recipes would change
`Kadomura’s principle of operation or otherwise render it inoperable for its
`intended purpose. PO Resp. 3–23. We turn first to the limitations of
`independent claims 27 and 37, and then we address each of Flamm’s
`arguments in turn.
`a. Samsung Properly Accounts for Each and Every Limitation
`Flamm does not address separately Samsung’s explanations and
`supporting evidence as to how the combined teachings of Kadomura and
`Matsumura account for all the limitations recited in independent claims 27
`and 37. See generally PO Resp. 9–23; see also Pet. Reply 3–4 (“Patent
`Owner does not contest that the combination [of Kadomura and Matsumura]
`discloses all limitations of independent claims 27 and 37.”). We have
`reviewed Samsung’s explanations and supporting evidence in this regard,
`and we agree with and adopt Samsung’s analysis showing that the combined
`teachings of Kadomura and Matsumura account for all the limitations recited
`in independent claims 27 and 37. See Pet. 19–33, 35–46; Ex. 1002 ¶¶ 42–
`62, 65–82.
`b. Samsung Provides a Sufficient Rationale to Combine the Teachings of
`Kadomura and Matsumura
`As we explained above, Samsung provides more than one reason as to
`why one of ordinary skill in the art would have been prompted to combine or
`modify the teachings of Kadomura and Matsumura. See Pet. 22–23, 31–33.
`Flamm contends that modifying Kadomura’s dry etching apparatus and
`method to include Matsumura’s control recipes would yield no benefit
`because the time period for changing the temperature during Kadomura’s
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`two-step etching processes “does not constitute a factor” in the processes.
`PO Resp. 9–10 (quoting Ex. 1006, 6:55–62, 8:42–50, 10:13–16). Similarly,
`relying almost exclusively on his own testimony, Flamm contends that
`modifying Kadomura’s dry etching apparatus and method to include
`Matsumura’s control recipes would have no meaningful effect because there
`are notable differences between Kadomura and Matsumura. Id. at 15–18
`(citing Ex. 2001 ¶¶ 18, 19, 25–29). Lastly, Flamm asserts that Samsung
`relies upon conclusory assertions and fails to articulate a reason why a
`person of ordinary skill in the art would combine the teachings of Kadomura
`with those of Matsumura to arrive at the claimed invention. Id. at 18–21.
`
`In its Reply, Samsung counters by asserting that it disagrees with
`Flamm’s primary argument t