throbber
Trials@uspto.gov
`571.272.7822
`
`
` Paper No. 7
`
`Filed: October 4, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`TOKYO ELECTRON LIMITED,
`Petitioner,
`
`v.
`
`DANIEL L. FLAMM,
`Patent Owner.
`
`____________
`
`Case IPR2017-01072
`Patent RE40,264 E
`____________
`
`
`
`Before CHRISTOPHER L. CRUMBLEY, JO-ANNE M. KOKOSKI, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`
`

`

`IPR2017-01072
`Patent RE40,264 E
`
`
`INTRODUCTION
`I.
`Tokyo Electron Ltd. (“Petitioner”) filed a Petition requesting an inter
`partes review of claims 13–26, 64, and 65 (“the challenged claims”) of U.S.
`Patent No. RE40,264 E (Ex. 1001, “the ’264 patent”). Paper 1 (“Pet.”).
`Daniel L. Flamm (“Patent Owner”) filed a Preliminary Response. Paper 5
`(“Prelim. Resp.”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless the information presented in the Petition shows “there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” Taking into account the arguments
`presented in the Petition and Preliminary Response, we conclude that
`Petitioner has not established a reasonable likelihood of prevailing with
`respect to the unpatentability of claims 13–26, 64, and 65. Accordingly, we
`do not institute an inter partes review on those claims.
`
`A. Related Matters
`The parties indicate that the ’264 patent is asserted in the following
`proceedings in the Northern District of California, which are currently
`stayed: Case Nos. 5:16-cv-01578-BLF, 5:16-cv-1579-BLF, 5:16-cv-1580-
`BLF, 5:16-cv-1581-BLF, 5:16-cv-02252-BLF,1 and was the subject of a
`declaratory judgment action in 5:15-cv-01277-BLF, which was dismissed
`with prejudice. See Pet. 2; Paper 4, 1.
`
`
`1 Petitioner states that Daniel L. Flamm v. Samsung Electronics Co., 1:155-
`cv-613-LY (E.D. Tex.) was transferred to the Northern District of California
`and is now pending under Case No. 5:16-cv-2252-BLF (N.D. Cal.). Pet. 2.
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`Patent RE40,264 E
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`
`Claims of the ’264 patent have been the subject of other inter partes
`review proceedings brought by different petitioners, including proceedings
`in which the Board denied institution of inter partes review (i.e., IPR2015-
`01759, IPR2015-01766, IPR2016-00468, IPR2016-00469, and IPR2016-
`00470, IPR2016-01510), and proceedings in which the Board did institute
`inter partes review but the parties reached settlement prior to the issuance of
`a final written decision by the Board (i.e., IP2015-01764, IPR2015-01768).
`The ’264 patent is also the subject of the following inter partes review
`proceedings that are currently pending: IPR2017-00279, IPR2017-00280,
`IPR2017-00281, and IPR2017-00282.2
`
`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 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 Abstract. The
`apparatus used in the method is shown in Figure 1, reproduced below.
`
`
`2 Case Nos. IPR2017-01749, IPR2017-01750, IPR2017-01751, and
`IPR2017-01752 have been terminated, and the Petitioner of these
`proceedings has been joined as a party to IPR2017-00279, IPR2017-00280,
`IPR2017-00281, and IPR2017-00282, respectively.
`
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`IPR2017-01072
`Patent RE40,264 E
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`
`
`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.
`
`Figures 6 and 7, reproduced below, depict a temperature-controlled
`substrate holder and temperature control systems.
`
`Figures 6 and 7 depict temperature-controlled fluid flowing through
`substrate holder (600, 701), guided by baffles 605, where “[t]he fluid [is]
`
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`IPR2017-01072
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`
`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
`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
`
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`IPR2017-01072
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`Figure 10, reproduced below. Id. at 17:58–18:57.
`
`
`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
`
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`IPR2017-01072
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`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.
`
`C. Illustrative Claim
`Of the challenged claims, claim 13 is the only independent claim at
`
`issue. Claim 13 is directed to a method of etching a substrate and is
`reproduced below:3
`13. A method of etching a substrate in the manufacture of a
`device, the method comprising:
`[a] placing a substrate having a film thereon on a substrate holder
`in a chamber, the substrate holder having a selected thermal
`mass;
`[b] setting the substrate holder to a selected first substrate holder
`temperature with a heat transfer device;
`[c] etching a first portion of the film while the substrate holder
`is at the selected first substrate holder temperature;
`[d] with the heat transfer device, changing the substrate holder
`temperature from the selected first substrate holder
`temperature
`to a selected second substrate holder
`temperature; and
`[e] etching a second portion of the film while the substrate holder
`is at the selected second substrate holder temperature;
`[f] wherein the thermal mass of the substrate holder is selected
`for a predetermined temperature change within a specific
`interval of time during processing; the predetermined
`temperature change comprises the change from the selected
`first substrate holder temperature to the selected second
`substrate holder temperature, and the specified time
`interval comprises the time for changing from the selected
`first substrate holder temperature to the selected second
`substrate holder temperature.
`
`3 Bracketed material added.
`
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`
`Basis
`§ 102
`§ 103
`§ 102
`§ 103
`§ 103
`
`§ 103
`
`§ 103
`
`D. Asserted Grounds of Unpatentability
`Petitioners challenge claims 13–26, 64, and 65 of the ’264 patent
`
`based on the asserted grounds of unpatentability (“grounds”) set forth in the
`table below. Pet. 5–6.
`Reference(s)
`Kadomura4
`Kadomura & Matsumura5
`Okada6
`Okada, Matsumura, and Kadomura
`Kadomura, Okada, Matsumura, and
`Kaji7
`Kadomura, Okada, Matsumura, and
`Okada 28
`Kadomura, Okada, Matsumura, and
`Edamura9
`
`Challenged Claim(s)
`13
`13
`13
`13, 14–16, 19–23, 64–65
`17, 18
`
`24
`
`25, 26
`
`
`4 US 5,981,913, filed Mar. 20, 1997, issued Nov. 9, 1999 (Ex. 1003,
`“Kadomura”).
`5 Japanese Pub. No. 3-196206, published Aug. 27, 1991 (Ex. 1005; Ex. 1006
`(English translation), “Matsumura”). Unless otherwise indicated, citations
`to foreign language documents will be made to the English translation of the
`document.
`6 Japanese Pub. No. 5-136095, published June 1, 1993 (Ex. 1003; Ex. 1004
`(English translation), “Okada”).
`7 Japanese Pub. No. 3-145123, published June 20, 1991 (Ex. 1011; Ex. 1012
`(English translation), “Kaji”).
`8 Japanese Pub. No. 5-243191, published September 21, 1993 (Ex. 1009; Ex.
`1010 (English translation), “Okada 2”).
`9 Japanese Pub. No. 8-191059, published July 23, 1996 (Ex. 1007; Ex. 1008
`(English translation), “Edamura”).
`
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`
`II. ANALYSIS
` Claim Construction
`A.
`The ’264 patent has expired.10 For claims of an expired patent, the
`Board’s claim interpretation is similar to that of a district court. See In re
`Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). In construing a claim term,
`we must look at the term’s ordinary and customary meaning, as understood
`by a person of ordinary skill in the art, in the context of the written
`description and the prosecution history. Phillips v. AWH Corp., 415 F.3d
`1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy
`need to be construed, and only to the extent necessary to resolve the
`controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999).
`Petitioner proffers constructions for several phrases found in claim 13,
`namely: “substrate holder,” “heat transfer device,” “selected thermal mass,”
`“selected first substrate holder temperature,” “selected second substrate
`holder temperature,” “predetermined temperature change,” “specific internal
`of time,” and “specified time interval.” See, e.g., Pet. 19–24. Patent Owner
`does not propose explicit claim constructions for any claim terms. See
`
`
`10 The ’264 patent expired no later than December 4, 2015, which is twenty
`years after December 4, 1995, the earliest filing date of an application to
`which the ’264 claims priority. See Ex. 1001 [63]; 35 U.S.C. § 154(a)(2)
`(2012 & Supp. III 2015) (stating patent term 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”).
`
`
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`IPR2017-01072
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`
`Prelim. Resp. For purposes of this Decision, based on the record before us,
`we address the interpretation of the terms “substrate holder,” “heat transfer
`device,” and “selected thermal mass.”
`
`1. Whether a “heat transfer fluid” is a required element of
`the claims
`Petitioner proposes two alternative claim interpretations for the terms
`“substrate holder,” “heat transfer device,” and “selected thermal mass.”
`Petitioner’s “second interpretation” for each term requires the involvement
`of a “heat transfer fluid.” Pet. 19–23. For example, Petitioner proposes
`construing “substrate holder” as a “support structure for holding a substrate
`and containing a heat transfer fluid responsible for changing the temperature
`of the support structure by changing the temperature of the heat transfer
`fluid.” Id. at 20–21. Similarly, Petitioner argues that “heat transfer device”
`should be construed as “[o]ne or more elements located within and/or
`external to the substrate holder for changing a temperature of the heat
`transfer fluid to change the temperature of the substrate holder” and that
`“selected thermal mass” should be construed as “allowing or facilitating a
`predetermined temperature change in a specified interval of time with the
`temperature of the substrate holder changed by changing the temperature of
`the heat transfer fluid.” Id. at 21–23. To support its argument that each of
`these claim terms requires involvement of a heat transfer fluid, Petitioner
`argues that in every embodiment disclosed in the ’264 patent, the
`temperature of the substrate holder is changed by changing the temperature
`of the heat transfer fluid that passes through the substrate holder. Id. at 20–
`23.
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`
`We do not construe these limitations as requiring the involvement of a
`heat transfer fluid. “Heat transfer fluid” is not recited in the claims.
`Although the claims are interpreted in light of the specification, it is
`improper to read limitations from the specification into the claims. See, e.g.,
`In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993); see also Thorner v.
`Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (“It is
`likewise not enough that the only embodiments, or all of the embodiments,
`contain a particular limitation. We do not read limitations from the
`specification into claims; we do not redefine words.”). As such, we are not
`persuaded that that the phrases “substrate holder,” “heat transfer device,”
`and “selected thermal mass,” as recited in claim 13, should be construed as
`requiring the involvement of “heat transfer fluid.”
`
`“selected thermal mass”
`2.
`Claim 13 requires that the substrate holder “hav[e] a selected thermal
`mass . . . wherein the thermal mass of the substrate holder is selected for a
`predetermined temperature change within a specific interval of time; the
`predetermined temperature change comprises the change from the selected
`first substrate holder temperature to the selected second substrate holder
`temperature, and the specified time interval comprises the time for changing
`from the selected first substrate holder temperature to the selected second
`substrate holder temperature.” Ex. 1001, 21:1–10 (emphasis added). In our
`Decision Denying Institution of Inter Partes Review in Case IPR2015-
`01759, we construed the phrase “selected thermal mass” of claim 13 of
`the ’264 patent as the “thermal mass selected by selecting the mass of the
`substrate holder, the material of the substrate holder, or both.” Lam
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`
`Research Corp. v. Flamm, IPR2015-01759 (PTAB Feb. 24, 2016) (Paper 7)
`(Ex. 1016, 13).
`Petitioner’s proposed construction for the phrase “selected thermal
`mass” includes the Board’s previous construction from Case IPR2015-
`01759, but with the “additional clarification” that the “thermal mass is not a
`unique selection for a particular temperature change and a specified interval
`of time, but rather, need only allow or facilitate a predetermined temperature
`change in a specified interval of time.” Pet. 22–23 (citing Ex. 1016, 11; Ex.
`1013 ¶¶ 85–89). To support this construction, Petitioner argues that,
`according to the ’264 patent, (1) the thermal mass of the substrate merely
`facilitates or allows a predetermined temperature change in a specified time
`interval, (2) other factors, such as the amount of heat supplied, also control
`the predetermined temperature change in a specified time interval, and (3) a
`given substrate holder can be utilized for multiple different temperature
`changes. Id. at 22 (citing Ex. 1001, Abstract, 2:51–57, 16:42–46, 16:60–67,
`19:8–12, 19:48–52, Fig. 10; Ex. 1013 ¶¶ 58–89); Ex. 1001, 16:60–67
`(stating that the “heat exchanger, fluid flow rate, coolant-side fluid
`temperature, heater power, chuck, etc. should be designed to bring the fluid
`to a setpoint temperature and bring the temperature of the chuck and wafer
`to predetermined temperatures within specified time intervals and within
`specified uniformity limits”).
`Patent Owner does not provide an explicit construction for these
`phrases but implicitly construes “selected thermal mass” to require that the
`selection of the thermal mass of the substrate holder is based on a
`predetermined temperature change and interval of time. See Prelim. Resp. 6
`(arguing that Kadomura “does not teach that the substrate’s thermal mass is
`
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`

`IPR2017-01072
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`
`‘selected’ for a predetermined temperature change within a specific interval
`of time”). Patent Owner also appears to implicitly construe claim 13 as
`requiring that a different, or unique, thermal mass must be selected for
`different sets of temperature changes over time. Id. (distinguishing claim 13
`over Kadomura by stating “[r]ather than selecting the thermal mass of the
`substrate holder for the particular desired temperatures for the two etches,
`Kadomura teaches using the same substrate holder for different sets of
`temperatures”).
`To the extent Petitioner is arguing that the selection of the thermal
`mass of the substrate holder, as required by claim 13, does not require basing
`selection of the thermal mass of the substrate holder on a predetermined
`temperature change of the substrate holder from the first selected substrate
`holder temperature to the selected second substrate holder temperature
`within a specific interval of time, we do not agree with this construction
`because it is inconsistent with the language of the full scope of claim 13.
`Specifically, step [f] of claim 13 recites that the:
`thermal mass is selected for a predetermined temperature
`change within a specified interval of time during processing; the
`predetermined temperature change comprises the change from
`the selected first substrate holder temperature to the selected
`second substrate holder temperature, and the specified time
`interval comprises the time for changing from the selected first
`substrate holder temperature to the selected second substrate
`holder temperature.
`
`Ex. 1001, 21:1–10.
`Thus, the ordinary meaning of the claim language itself requires
`predetermining the temperature change (i.e., the change from the selected
`first substrate holder temperature to the selected second substrate holder
`
`13
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`
`temperature) within a specific interval of time (i.e., the time for changing
`from the selected first substrate holder temperature to the selected second
`substrate holder temperature), and based on that predetermination, selecting
`the thermal mass of the substrate holder. A construction that does not
`require selecting a thermal mass for a particular temperature change and a
`specified interval of time, as opposed to selecting a thermal mass that can
`facilitate or allow a temperature change, is not consistent with the plain and
`ordinary meaning of the claim.
`We recognize that the thermal mass of a substrate holder is not the
`only factor that controls the rate of temperature change of the substrate
`holder. See, e.g., Ex. 1001, 16:60–67 (stating that the “heat exchanger, fluid
`flow rate, coolant-side fluid temperature, heater power, chuck, etc. should be
`designed to bring the fluid to a setpoint temperature and bring the
`temperature of the chuck and wafer to predetermined temperatures within
`specified time intervals and within specified uniformity limits”). The plain
`language of the claim, however, still requires that the thermal mass of the
`substrate holder be selected for a predetermined temperature change within
`the specific interval of time.
`Our construction is also consistent with the prosecution history of
`the ’264 patent. During the Reissue Proceeding of the ’245 application
`which gave rise to the ’264 patent, Patent Owner amended claim 56, which
`ultimately issued as claim 13, to replace language stating the thermal mass
`of the substrate holder “is selected to allow changing the first substrate
`holder temperature to the second substrate holder temperature within a
`selected time period” with the additional limitations of step [f] recited above.
`Nov. 20, 2006 Amendment under 37 C.F.R. § 1.11, pp. 2–3. (Ex. 3001). As
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`IPR2017-01072
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`
`a result of this amendment, the Examiner withdrew a § 102 anticipation
`rejection over Japanese Publication No. 59-076876. May 30, 2007 Final
`Office Action (Ex. 3002, 4). The Examiner stated that “[a]pplicant’s point is
`well taken that JP-076876 does not teach selecting a thermal mass based on
`a predetermined temperature change and specified interval of time
`processing, as in the context of claim 56.” Id. (emphasis added). The
`Examiner further stated that “[a]lthough such a thermal mass may be
`inherent, there is no teaching to predetermine a temperature change and
`interval of time, and based on that, to select the thermal mass of the
`substrate holder.” Id. (emphasis added).
`To the extent Patent Owner argues that the “thermal mass of the
`substrate holder is selected for” language of claim 13 requires that a unique
`thermal mass of a substrate holder be selected for different sets of
`temperature changes within specified time intervals (e.g., a particular
`thermal mass cannot be selected for different sets of temperatures), we
`disagree. See Prelim. Resp. 6. The plain language of the claim does not
`require that a different substrate holder or “unique” thermal mass be selected
`for each predetermined particular temperature change over specified time
`intervals. Patent Owner does not direct us to, nor do we see, language in
`the ’264 patent that supports such a construction.
`For the foregoing reasons, we construe selected thermal mass as
`“thermal mass selected by selecting the mass of the substrate holder, the
`material of the substrate holder, or both.” We further construe the remaining
`limitations of step [f] requiring that the thermal mass of the substrate holder
`is selected for a predetermined temperature change within a
`specified interval of time during processing; the predetermined
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`
`temperature change comprises the change from the selected first
`substrate holder temperature to the selected second substrate
`holder temperature, and the specified time interval comprises the
`time for changing from the selected first substrate holder
`temperature to the selected second substrate holder temperature
`
`as meaning that “the temperature change from the first substrate holder
`temperature to the second substrate holder temperature within a specified
`interval of time is predetermined, and based on that predetermination, the
`thermal mass of the substrate holder is selected.”
`
`3. Remaining Claim Terms
`For purposes of this Decision, based on the record before us, we
`determine that none of the remaining claim terms require an explicit
`construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999).
`
`B. Priority Date for the Challenged Claims
`of the ’264 Patent
`The ’264 patent reissued from the ’245 application, filed on May 14,
`
`2003. Ex. 1001, [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.
`
`Petitioner contends that September 11, 1997, the filing date of the
`’650 provisional application, is the earliest possible priority date for the
`challenged claims, arguing that the ’224 application, filed on December 4,
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`1995, does not disclose the claimed subject matter. Pet. 4–5. Relying upon
`the testimony of its Declarant, Mark Kushner Ph.D. (Ex. 1013 “the Kushner
`Declaration”), Petitioner contends the ’224 application fails to disclose
`changing the temperature between two etching steps or selecting a thermal
`mass. Id. (citing Ex. 1013 ¶¶ 33–37). Petitioner also cites to our Decision
`Denying Institution of Inter Partes Review in Case IPR2016-01510
`(Ex. 1018), in which we found, inter alia, that claims 13–26, 64, and 65 are
`not entitled to a filing date earlier than the September 11, 1997 filing date of
`the ’650 provisional application. Samsung Electronics Co., Ltd. v. Flamm,
`IPR2016-01510 (PTAB Feb. 14, 2017) (Paper 6). Petitioner asserts that,
`because the ’224 application does not provide sufficient written description
`support for certain limitations required by independent claim 13, the
`challenged claims only are entitled to the priority date of the ’650
`provisional application (i.e., September 11, 1997). Pet. 4–5. Patent Owner
`does not argue that the ’264 patent is entitled to claim a priority date earlier
`than September 11, 1997.
`
`On this record, we are persuaded by Petitioner’s argument that
`the ’224 application does not provide sufficient written description support
`for the full scope of independent claim 13, and, therefore, the challenged
`claims of the ’264 patent are not entitled to claim priority to the December 4,
`1995 filing date of the ’224 application.
`
`C. Prior Art Status of Matsumura and Okada 2
`As an initial matter, we address whether Petitioner has made a
`threshold showing that each of the asserted references qualify as prior art
`under 35 U.S.C. § 102. Pre-AIA 35 U.S.C. § 102 states that:
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`A person shall be entitled to a patent unless —
`(a) the invention was . . . described in a printed publication in
`this or a foreign country, before the invention thereof by the
`applicant for patent, or
`(b) the invention was . . . described in a printed publication in
`this or a foreign country . . . more than one year prior to the date
`of the application for patent in the United States.
`Patent Owner contends that Petitioner has not established that
`Matsumura or Okada 2 qualify as prior art, arguing that both references are
`Japanese Laid Open Publications and that “[o]lder cases have held that laid
`open patent applications are not ‘published’ and cannot constitute prior art.”
`Prelim. Resp. 10–11 (citing Ex parte Haller, 103 USPQ2d 332 (Bd. App.
`1953)). Patent Owner further argues that Matsumura and Okada 2 “were in
`accessible; resided in the Japanese Patent Office and were not translated into
`English.” Prelim. Resp. 11.
`As noted above, the challenged claims only are entitled to the priority
`date of the ’650 provisional application (i.e., September 11, 1997). We
`determine that Petitioner has made a threshold showing that both Matsumura
`and Okada 2 were both published more than one year before September 11,
`1997, and therefore qualify as prior art printed publications under 35 U.S.C.
`§§ 102(a)11 and 102(b).
`Matsumura recites a publication date of August 21, 1991, and
`Okada 2 recites a publication date of September 23, 1993. Ex. 1006, [43];
`Ex. 1010, [43]. Both references identify the publication date using INID
`code “43.” Id. “INID” is an acronym for “Internationally agreed Numbers
`
`
`11 Patent Owner has not identified a date of invention earlier than September
`11, 1997.
`
`18
`
`

`

`IPR2017-01072
`Patent RE40,264 E
`
`for the Identification of (bibliographic) Data” proposed by the World
`Intellectual Property Organization (WIPO) to aid in the identification of
`bibliographic data concerning patent documents, such as the date that the
`document was published. See WIPO HANDBOOK ON INDUSTRIAL PROPERTY
`INFORMATION AND DOCUMENTATION, Standard ST.9, p. 3.9.0 (available at
`http://www.wipo.int/export/sites/www/standards/en/pdf/03-09-01.pdf).
`INID code 43 is used to identify the “date of making available to the public
`by printing or similar process of an unexamined patent document, on which
`no grant has taken place on or before the said date.” Id. at 3.9.5 (emphasis
`added). Other INID codes are used to identify other ways that patent
`documents are made available to the public. For example, INID codes 41
`and 42 are used to identify the date a patent document was made “available
`to the public by viewing, or copying on request” and INID code 46 is used to
`identify the date that “the claim(s) only of a patent document” were made
`available to the public. Id.
`At this stage of the proceeding, we find that the Japanese Patent
`Office’s use of INID code 43 to describe the publication dates of Matsumura
`and Okada 2 as the date that these references were “mad[e] available to the
`public by printing or similar process,” provides sufficient evidence to
`conclude that both Matsumura and Okada 2 constitute printed publications
`under § 102. See Ex. 1006 [43]; Ex. 1010 [43]; see also Cacace v. Meyer
`Marketing (Macau Commercial Offshore) Co., Ltd., 812 F. Supp. 547, 563
`n. 16 (S.D.N.Y. 2011) (finding that Japanese laid open patent applications
`“are treated as printed publications under United States patent law”). As
`such, we determine that Petitioner has made a threshold showing that
`Matsumura and Okada 2 were published more than one year before
`
`19
`
`

`

`IPR2017-01072
`Patent RE40,264 E
`
`September 11, 1997, the filing date of the ’650 provisional application to
`which the ’264 patent claims priority, and therefore qualify as prior art
`printed publications under 35 U.S.C. §§ 102(a) and (b). We similarly find
`that Edamura, Okada, and Kaji, which have each been characterized by the
`Japanese Patent Office using INID code 43, have publication dates more
`than one year before September 11, 1997, and therefore also qualify as prior
`art printed publications under §§ 102(a) and 102(b). See Ex. 1008 [43], Ex.
`1004, [43], Ex. 1012 [43].
`Patent Owner’s reliance on Ex parte Haller for the proposition that
`laid open patent applications are not printed publications is not persuasive,
`because the specification of the application at issue in Haller was not made
`available to the public by printing, but rather made open to public
`inspection. Prelim. Resp. 10–11; see Ex parte Haller, 103 USPQ 332 (Bd.
`App. 1953); see also In re Wyer, 655 F.2d 221, 226–27 (CCPA 1981)
`(distinguishing Ex parte Haller and affirming the Board’s finding that a laid
`open Australian patent application was a printed publication). Patent
`Owner’s unsupported attorney argument that Matsumura and Okada 2 were
`“inaccessible” does not overcome the evidence that the references were
`published as of the date indicated by INID code 43. See Prelim. Resp. 11.
`
`D. Level of Ordinary Skill in the Art
`Petitioner contends a person of ordinary skill in the art at the time of
`the alleged invention of the ’264 patent would have had familiarity with
`plasma processing systems and at least a Bachelor of Science degree in
`electrical engineering and/or physics, or a related field such as, but not
`limited to, materials science, chemical engineering or mechanical
`engineering and 4–6 years of experience working in the field of plasma
`
`20
`
`

`

`IPR2017-01072
`Patent RE40,264 E
`
`processing, or a comparable amount of combined education and equivalent
`experience with respect to plasma processing systems. Pet. 25–26 (citing
`Ex. 1013 ¶ 39). Petitioner also contends that the level of skill is reflected by
`the teachings of the prior art, and that a person of ordinary skill in the
`relevant field would be knowledgeable of heat transfer relationships in
`systems and processes. Id. at 26 (citing Ex. 1013 ¶ 40).
`Patent Owner does not propose a different level of ordinary skill in its
`Preliminary Response. Based on our review of the ’264 patent, the types of
`problems and solutions described i

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