Evidence Establishing Date of Cataloging and Shelving Not Required IPR2014-01086


Takeaway: Evidence establishing a specific date of cataloging and shelving before the critical date, although desirable, is not required in a public accessibility determination.

In its Final Written Decision, the Board held that claims 1, 4, 10–12, 17, 18, and 44 of the ’759 patent are unpatentable under 35 U.S.C. § 103(a). The dissenting-in-part opinion disagreed that claim 44 is unpatentable.

The ’759 patent relates to a high-power pulsed magnetron sputtering apparatus. Petitioner challenged the patentability of the claims based on the following grounds: (1) claims 1, 4, 10, and 12 as obvious over Wang and Kudryavtsev, (2) claim 11 as obvious over Wang, Kudryavtsev, and Li, (3) claim 17 as obvious over Wang, Kudryavtsev, and Müller-Horsche, (4) claim 18 as obvious over Wang, Kudryavtsev, and Kobayashi, and (5) claim 44 as obvious over Wang, Kudryavtsev, and the Mozgrin Thesis.

The Board construed several terms. First, the Board construed “multi-step ionization process” to mean “an ionization process having at least two distinct steps.”

Second, regarding “weakly-ionized plasma” and “strongly-ionized plasma” the Board noted that Patent Owner attempted to import extraneous limitations into the claim by arguing that specific ion density ranges for these claim terms are required. The Board determined that Patent Owner did not identify whether the ’759 patent’s specification explicitly defined these terms. Further, Patent Owner’s construction would render a dependent claim’s limitation meaningless. Thus, the Board construed “a weakly-ionized plasma” as meaning “a plasma with a relatively low peak density of ions,” and it construed “a strongly-ionized plasma” as meaning “a plasma with a relatively high peak density of ions.”

Third, Patent Owner argued that “without forming an arc discharge,” should not be construed as “reduces or substantially eliminates the possibility of arcing” because such a construction would be inconsistent with the plain meaning of the word “without.” The Board disagreed, stating that Patent Owner failed to explain why one could have interpreted the phrase “without forming an arc discharge” to require the ionization of excited atoms be performed completely free of arcing. The Board also noted that the specification of the ’759 patent does not indicate that no arcing occurs when the excited atoms are ionized within the weakly-ionized plasma. Thus, the Board construed “without forming an arc discharge” as meaning “substantially eliminating the possibility of arcing.”

Turning to Petitioner’s obviousness challenge of claims 1, 4, 10, and 12 over the combination of Wang and Kudryavtsev, the Board stated the parties dispute (1) whether the combination of the art render obvious the effect or result limitations, and (2) whether Petitioner has articulated a reason why one of ordinary skill would combine the references.

The Board stated that Wang does not expressly describe increasing the excitation rate of the ground state atoms. Petitioner argued that Wang’s disclosed power levels of the power pulses fall within the ranges disclosed in the ’759 patent, and, therefore, “Wang is as likely as the ’759 patent to increase the excitation rate of ground state atoms within the weakly-ionized plasma and to cause multi-step ionization.” Petitioner argued that even if Wang does not disclose an increase in ionization rate, it would have been obvious, in light of Kudryavtsev’s teaching of an “explosive increase” in plasma density, to adjust Wang’s operating parameters to trigger a fast stage of ionization. Patent Owner argued that the alleged combination of Wang and Kudryavtsev would not have had a reasonable expectation of success or predictable results. The Board agreed with Petitioner, noting that it is not necessary that the prior art references can be physically combined. Rather, the claimed invention is determined to be obvious based on the teachings of the prior art as a whole. The Board also determined that a person of ordinary skill in the art would have had a reasonable expectation of success in combining Wang with Kudryavtsev.

Patent Owner argued that Kudryavtsev does not teach or suggest a “voltage pulse” as recited in claim 1. Patent Owner argued that neither Wang nor Kudryavtsev describes a weakly-ionized plasma and a strongly-ionized plasma, because they do not disclose certain specific ion density ranges. As noted above, the Board noted that this is not recited in claim 1. The Board disagreed with Patent Owner, finding that Patent Owner’s characterization of Wang was too narrow and failed to consider Wang, as a whole, in the context of state of the art at the time. Thus, the Board concluded that the combination of Wang and Kudryavtsev discloses the voltage pulse.

Claim 1 recites “without forming an arc discharge.” Relying on expert testimony, Patent Owner asserted that (1) Wang suggests arcing does occur after ignition, and (2) Wang merely states that the particulates produced by arcing are reduced, not that arcing is reduced after ignition. As above, the Board determined that Patent Owner’s interpretation of Wang was too narrow and Patent Owner conflated two of the embodiments disclosed by Wang. Petitioner’s expert testified that the relatively constant impedance allows the strongly-ionized plasma to be generated without arcing. The Board also noted that Kudryavtsev identifies conditions that may avoid arcing. Thus, the Board determined that Petitioner had demonstrated, by a preponderance of evidence that claims 1, 4, 10, and 12 are unpatentable over the combination of Wang and Kudryavtsev.

Regarding claim 11, Petitioner asserted that Li discloses a magnetron sputtering apparatus with “a temperature controller that controls the temperatures of the substrate support.” Petitioner’s expert testified that it would have been obvious to an ordinary artisan to use a temperature controller in Wang’s apparatus to control the substrate support temperature, “so as to control grain growth of Wang’s deposited metal as well as to assist with conformal filling of features, such as trenches, with Wang’s deposited material.” Patent Owner alleged that Li discloses controlling the substrate temperature, and not the substrate support temperature. Petitioner countered that Li discloses an apparatus where a heater is placed beneath the substrate support and temperature is measured by a thermocouple attached to the substrate holder. The Board agreed with Petitioner and found that claim 11 is unpatentable over Wang, Kudryavtsev, and Li.

Petitioner asserted that Müller-Horsche discloses a UV source for pre-ionization, generating a weakly-ionized plasma, to avoid arcing as recited in claim 17. Patent Owner argued that Wang teaches away from the type of pulsed energy pre-ionization that is a key aspect of Müller-Horsche. The Board noted that a reference does not teach away if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed. The Board stated that, as above, Patent Owner conflated Wang’s first and second embodiments. In the first embodiment, the gas is not pre-ionized, but it is in the second embodiment. Thus, Wang does not teach away from the asserted combination. Patent Owner also asserted that Müller-Horsche teaches away from the purpose of Wang’s sputtering apparatus. The Board noted that Petitioner had not asserted Müller-Horsche for the feature for which Patent Owner alleged a teaching away. Thus, the Board concluded that claim 17 was unpatentable.

Patent Owner asserted the same arguments for patentability for claim 18 as it had for claim 1. Thus, the Board determined claim 18 is unpatentable for the same reasons as claim 1.

Turning to claim 44, the Board first addressed whether the Mozgrin Thesis is a printed publication available for prior art under 35 U.S.C. § 102. Petitioner provided a copy of the catalog entry for the Mozgrin Thesis at the Russian State Library, and a certified English-language translation thereof. Patent Owner argued that Petitioner provided no evidence that the phrase “Imprinting Moscow 1994” appearing on the catalog entry means that the Mozgrin Thesis was cataloged on that particular date. In agreeing with Petitioner, the Board stated that although evidence establishing a specific date of cataloging and shelving before the critical date would have been desirable, it is not required in a public accessibility determination. Further, Patent Owner did not object to the presented evidence, challenge its authenticity, or file a motion to exclude the evidence. Thus, the Board concluded that the Mozgrin Thesis is a printed publication under § 102.

On the merits of claim 44, Patent Owner argued that the process pressures cited as critical in Wang and the Mozgrin Thesis teach away from each other. The Board determined that the mere fact that the Mozgrin Thesis and Wang utilize different pressures is not evidence that either criticizes, discredits, or otherwise discourages the claimed time range of voltage pulses. The Board concluded that claim 44 was unpatentable.

In a dissenting-in-part opinion, Judge Stephens disagreed that the Mozgrin Thesis is a printed publication under § 102, because there was a lack of evidence showing that the Mozgrin Thesis was sufficiently accessible to the public interested in the art more than one year prior to the date of the application for patent. Judge Stephens noted that the evidence provided by Petitioner merely showed a date without any explanation of its import. Accordingly, Petitioner provided no evidence of the date on which the Mozgrin Thesis was incorporated into the Russian State Library’s catalog of dissertations or even, that the Russian State Library catalog of dissertations existed at the time of invention. While evidence establishing a specific date was not required in In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986), there was evidence of general library practice of cataloging and shelving. Judge Stephens stated that such evidence was not present here. Further, Patent Owner is not required to object under § 42.64(b) because Patent Owner argued that the Mozgrin Thesis is not prior art under § 102. Patent Owner’s challenge is not proper in a motion to exclude. Because the dissenting-in-part opinion found that Petitioner did not establish that the Mozgrin Thesis is a printed publication, it concluded that Petitioner has not shown that claim 44 is obvious.

Paper 36: Final Written Decision
Dated: August 14, 2015
Patent 7,147,759
Before: Kevin F. Turner, Debra K. Stephens, Joni Y. Chang, Susan L.C. Mitchell, and Jennifer Meyer Chagnon
Opinion for the Board Written by: Chang
Opinion Dissenting–in-Part Written by: Stephens
Related proceedings: Zond, LLC v. Advanced Micro Devices, Inc., No.1:13-cv-11577-DPW (D. Mass.)