Globalfoundries U.S., Incv.Zond, LLCDownload PDFPatent Trial and Appeal BoardNov 3, 201510249202 (P.T.A.B. Nov. 3, 2015) Copy Citation Trials@uspto.gov Paper 49 571-272-7822 Entered: November 3, 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, Petitioners, v. ZOND, LLC, Patent Owner. ____________ Case IPR2014-00917 1 Patent 6,805,779 B2 ____________ Before KEVIN F. TURNER, DEBRA K. STEPHENS, JONI Y. CHANG, SUSAN L.C. MITCHELL, and JENNIFER MEYER CHAGNON, Administrative Patent Judges. CHANG, Administrative Patent Judge. FINAL WRITTEN DECISION Inter Partes Review 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 1 Cases IPR2014-00918, IPR2014-01074, and IPR2014-01025 have been joined with the instant inter partes review. IPR2014-00917 Patent 6,805,779 B2 2 I. INTRODUCTION Taiwan Semiconductor Manufacturing Company, Ltd. and TSMC North America Corporation (collectively, “TSMC”) filed a Petition requesting an inter partes review. Paper 2 (“Pet.”). Patent Owner Zond, LLC (“Zond”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). On November 17, 2014, we instituted the instant trial as to claims 7, 9, 20, 21, 38, and 44 of U.S. Patent No. 6,805,779 B2 (Ex. 1401, “the ’779 patent”), pursuant to 35 U.S.C. § 314(a). Paper 10 (“Dec.”). Subsequent to institution, we granted the revised Motions for Joinder filed by other Petitioners (collectively, “GlobalFoundries”) listed in the Caption above, joining Cases IPR2014-00918, IPR2014-01074, and IPR2014-01025 with the instant trial (Papers 13–15), and also granted a Joint Motion to Terminate with respect to TSMC (Paper 31). Zond filed a Response (Paper 27, “PO Resp.”), and GlobalFoundries filed a Reply (Paper 38, “Reply”). An oral hearing 2 was held on June 15, 2015, and a transcript of the hearing was entered into the record. Paper 48 (“Tr.”). We have jurisdiction under 35 U.S.C. § 6(c). This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a). For the reasons set forth below, we determine that GlobalFoundries has shown by a preponderance of the evidence that claims 7, 9, 20, 21, 38, and 44 are unpatentable under 35 U.S.C. § 103(a). 2 The oral arguments for this review and the following inter partes reviews were consolidated: IPR2014-00828, IPR2014-00829, IPR2014-01073, and IPR2014-01076. IPR2014-00917 Patent 6,805,779 B2 3 A. Related Matters The parties indicate that the ’779 patent was asserted in several related district court proceedings, including Zond, LLC v. Advanced Micro Devices, Inc., No.1:13-cv-11577-DPW (D. Mass.), and identify other petitions for inter partes review that are related to this proceeding. Pet. 1; Paper 6. B. The ’779 Patent The ’779 patent relates to a method and a system for generating a plasma with a multi-step ionization process. Ex. 1401, Abs. For instance, Figure 2 of the ’779 patent, reproduced below, illustrates a cross-sectional view of a plasma generating apparatus: In the embodiment shown in Figure 2, feed gas source 206 supplies ground state atoms 208 to metastable atom source 204 that generates metastable atoms 218 from ground state atoms 208. Id. at 4:26–42. Plasma 202 is generated from metastable atoms 218 in process chamber 230. Id. at 5:25–34. IPR2014-00917 Patent 6,805,779 B2 4 Electrons and ions are formed in metastable atom source 204 along with excited or metastable atoms 218. Id. at 8:20–23. In another embodiment, the ions and electrons are separated from excited or metastable atoms 218 and trapped in an electron/ion absorber before excited or metastable atoms 218 are injected into plasma chamber 230. Id. at 8:23–26, 18:62–67, Fig. 10. Figure 12B of the ’779 patent illustrates the electron/ion absorber and is reproduced below: As shown in Figure 12B, electron/ion absorber 750ʹ includes magnets 776 and 778 that generate magnetic field 780, trapping electrons 772 and ions 774 in chamber 760ʹ. Id. at 20:9–13. Excited or metastable atoms 768 and ground state atoms 770 then flow through output 754ʹ. Id. at 20:19–21. C. Illustrative Claim Of the challenged claims, claim 44 is the sole independent claim. Claims 7 and 9 depend directly from independent claim 1; claims 20 and 21 depend directly from claim 18; and claim 38 depends directly from IPR2014-00917 Patent 6,805,779 B2 5 independent claim 30. GlobalFoundries is not challenging independent claims 1, 28, and 30 in the instant proceeding. 3 Claim 44 is illustrative: 44. A plasma generator that generates a plasma with a multi- step ionization process, the plasma generator comprising: a feed gas source comprising ground state atoms; an inductively coupled discharge source that is coupled to the feed gas source, the inductively coupled discharge source generating excited atoms from the ground state atoms; a plasma chamber that is coupled to the inductively coupled discharge source, the plasma chamber confining a volume of excited atoms generated by the inductively coupled discharge source; and an energy source that is coupled to the volume of excited atoms confined by the plasma chamber, the energy source raising an energy of excited atoms in the volume of excited atoms so that at least a portion of the excited atoms in the volume of excited atoms is ionized, thereby generating a plasma with a multi-step ionization process. Id. at 24:48–67 (emphases added). D. Prior Art Relied Upon GlobalFoundries relies upon the following prior art references: Pinsley US 3,761,836 Sept. 25, 1973 (Ex. 1405) Angelbeck US 3,514,714 May 26, 1970 (Ex. 1406) Iwamura US 5,753,886 May 19, 1998 (Ex. 1407) 3 Independent claims 1 and 18 are being challenged in Case IPR2014-01073, and independent claim 30 is being challenged in Case IPR2014-00828. IPR2014-00917 Patent 6,805,779 B2 6 Gruber EP 0 146 509 A2 June 26, 1985 (Ex. 1413) Wells PCT WO 83/01349 Apr. 14, 1983 (Ex. 1414) D.V. Mozgrin, et al., High-Current Low-Pressure Quasi-Stationary Discharge in a Magnetic Field: Experimental Research, 21 PLASMA PHYSICS REPORTS, NO. 5, 400–09 (1995) (Ex. 1403, “Mozgrin”). A. A. Kudryavtsev and V.N. Skrebov, Ionization Relaxation in a Plasma Produced by a Pulsed Inert-Gas Discharge, 28(1) SOV. PHYS. TECH. PHYS. 30–35 (1983) (Ex. 1404, “Kudryavtsev”). E. Grounds of Unpatentability We instituted the instant trial based on the following grounds of unpatentability (Dec. 29): Claims Basis References 38 § 103(a) Iwamura, Angelbeck, and Pinsley 4 9, 21, 44 § 103(a) Iwamura, Angelbeck, Pinsley, and Gruber 7, 20 § 103(a) Iwamura, Angelbeck, Pinsley, and Wells 4 Pinsley was omitted inadvertently from each statement of the asserted grounds of unpatentability based, in whole or in part, on the combination of Iwamura and Angelbeck, although included in the corresponding analysis. See, e.g., Pet. 38, 46. Therefore, we treated the statements of the asserted grounds as harmless error and presume that GlobalFoundries intended to include Pinsley in each of those asserted grounds. Dec. 7. Zond addressed each ground as including Pinsley. PO Resp. 22, 24–27, 37–42. IPR2014-00917 Patent 6,805,779 B2 7 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 also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015) (“Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA,” 5 and “the standard was properly adopted by PTO regulation.”). 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.”). Claim terms 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). An inventor may rebut that presumption by providing a definition of the term in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be read from the specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). 5 Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”). IPR2014-00917 Patent 6,805,779 B2 8 “excited atoms,” “metastable atoms,” and “multi-step ionization process” With the above-stated principles in mind, we construed the following terms in the Decision on Institution: “excited atoms,” “metastable atoms,” and “multi-step ionization process.” Dec. 8–11. Subsequent to institution, neither party challenges any aspect of our claim constructions as to these terms. PO Resp. 15–16; Ex. 2005 ¶¶ 41–42; Ex. 1417 ¶¶ 14–19; see generally Reply. Upon review of the entire record before us, including the parties’ explanations and supporting evidence concerning these terms, we discern no reason to change those claim constructions for purposes of this Final Written Decision. For convenience, those claim constructions from the Decision on Institution are reproduced below: Claim Terms Claim Constructions “excited atoms” (claim 7) neutral atoms that have one or more electrons in a state that is higher than its lowest possible state (Dec. 8) “metastable atoms” (claim 38) excited atoms having energy levels from which dipole radiation is theoretically forbidden (Dec. 8– 9) “multi-step ionization process” (claim 44) an ionization process having at least two distinct steps (Dec. 10–11) “plasma” For this Final Written Decision, we find it necessary to construe the claim term “plasma.” Claims 1, 18, and 44 each recite “[a] plasma generator IPR2014-00917 Patent 6,805,779 B2 9 that generates a plasma with a multi-step ionization process,” and claim 30 recites a similar limitation. See, e.g., Ex. 1401, 24:48–51. Dr. Uwe Kortshagen, GlobalFoundries’s expert declarant, testifies that a plasma is a collection of ions, electrons, ground state atoms, excited atoms, and metastable atoms. Ex. 1402 ¶¶ 21–27. Metastable atoms are excited neutral atoms that are in a metastable state, but have not been ionized. Ex. 1401, 7:22–8:10. According to the Specification of the ’779 patent, all excited noble gases (e.g., helium and argon) have metastable states. Id. at 7:37–47. As Dr. Kortshagen explains, when generating excited atoms, multiple levels of excited states are formed, and, therefore, generating excited atoms means also generating metastable atoms. Ex. 1402 ¶ 24. Zond’s expert, Dr. Larry D. Hartsough, also testifies that, in the context of the ’779 patent, one with ordinary skill in the art at the time of the invention would have understood that a plasma includes charged particles (ions and electrons), as well as neutral atoms—namely, ground state atoms, excited atoms, and metastable atoms—because not every atom is ionized. Ex. 1419, 42:9–43:17. We observe that the ’779 patent uses the term “plasma” in accordance with its ordinary and customary meaning as would be understood by one with ordinary skill in the art. For instance, the Specification of the ’779 patent states that “[a] plasma is a collection of charged particles that move in random directions,” and further explains that a plasma also includes excited and metastable atoms. Ex. 1401, 1:7–8, 8:43–48. We are cognizant that, in an ideal situation, a plasma can be fully ionized, which contains only charged particles (ions and electrons). Ex. 1419, 42:9–43:17. IPR2014-00917 Patent 6,805,779 B2 10 Based on the evidence before us, we construe the claim term “plasma” as “a collection of ions, electrons, ground state atoms, excited atoms, and metastable atoms,” consistent with the term’s ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the Specification of the ’779 patent. B. Principles of Law A patent claim is unpatentable under 35 U.S.C. § 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 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; Translogic, 504 F.3d at 1262. We also recognize that prior art references must be “considered together with the knowledge of one of ordinary skill in the pertinent art.” Paulsen, 30 F.3d at 1480 (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)); Translogic, 504 F.3d at 1259–1262. Notwithstanding IPR2014-00917 Patent 6,805,779 B2 11 that Dr. Hartsough provides a definition of “a person of ordinary skill in the art” in the context of the ’779 patent, 6 we are mindful that the level of ordinary skill in the art also 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 instituted grounds of unpatentability with the above-stated principles in mind. C. Obviousness Based, in Whole or in Part, on the Combination of Iwamura, Angelbeck, and Pinsley GlobalFoundries asserts that claim 38 is unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of Iwamura, Angelbeck, and Pinsley. Pet. 38–51, 59–60. GlobalFoundries also asserts that claims 9, 21, and 44 are unpatentable over the combination of Iwamura, Angelbeck, Pinsley, and Gruber (id. at 38–55), and that claims 7 and 20 are unpatentable over the combination of Iwamura, Angelbeck, Pinsley, and Wells (id. at 38– 51, 55–57). In support of these asserted grounds of unpatentability, GlobalFoundries provides detailed explanations as to how each claim limitation is met by the aforementioned combinations of the references and rationales for combining the references. Id. at 38–60. GlobalFoundries also 6 “[A] person of ordinary skill in the art at the time of filing of the ’779 Patent [is] someone who holds at least a bachelor of science degree in physics, material science, or electrical/computer engineering with at least two years of work experience or equivalent in the field of development of plasma-based processing equipment.” Ex. 2005 ¶ 12. IPR2014-00917 Patent 6,805,779 B2 12 proffers the Declaration of Dr. Kortshagen (Ex. 1402) to support its Petition and a Supplemental Declaration of Dr. Kortshagen (Ex. 1417) to support its Reply. In its Response, Zond counters that those combinations of cited prior art references do not disclose all of the claim limitations set forth in the claims at issue. PO Resp. 33–56. Zond also argues that GlobalFoundries has not articulated a sufficient rationale to combine any of the references. Id. at 24–33. As support, Zond directs our attention to a Declaration of Dr. Hartsough (Ex. 2005). We have reviewed the entire record before us, including the parties’ explanations and supporting evidence presented during this trial. We begin our discussion below with a brief summary of Iwamura, and then we address the parties’ contentions in turn. Iwamura Iwamura discloses a plasma treatment apparatus for generating a stable plasma with a multi-step ionization process to treat a semiconductor wafer. Ex. 1407, Abs., 6:67–7:8. Figure 1 of Iwamura, reproduced below (with our annotations added), illustrates a plasma treatment apparatus. IPR2014-00917 Patent 6,805,779 B2 13 As shown in Figure 1 of Iwamura, plasma chamber 10 is coupled to the gas supply pipe (shown as items 20a and 20b). Gas supply 20 supplies a gas capable of plasma discharge (e.g., helium or argon, a noble gas) through a pre-excitation unit that includes ultraviolet lamp 24, and a first plasma generation unit that includes electrodes 26. Ex. 1407, 6:67–7:17, 49. Ultraviolet lamp 24 causes photoionization, raising the excitation level of the gas and generating excited and metastable atoms from ground state atoms. Id. at 7:55–60. Thereafter, a plasma is generated from the gas in plasma region A, between electrodes 26 (the first plasma generation unit), and a plasma also is generated in plasma region B, between electrodes 30 (the second plasma generation unit). Id. at 7:61–65, 8:4–9, 8:32–46. According to Iwamura, because the excitation level of the gas is raised first, a stable plasma can be generated inside the plasma chamber. Id. at 8:32–37. Pre-excitation unit First plasma generation unit Second plasma generation unit IPR2014-00917 Patent 6,805,779 B2 14 Consequently, the uniformity of the plasma density as well as the yield of the treatment of the semiconductor wafer can be improved. Id. at 8:41–46. Generating a plasma with a multi-step ionization process Each of independent claims 1, 18, 30, and 44 requires an energy source to ionize at least a portion of the excited or metastable atoms inside a chamber, thereby generating a plasma with a multi-step ionization process. See, e.g., Ex. 1401, 21:23–29, 22:40–47. As we discussed above in the Claim Construction Section of this Decision, metastable atoms are excited neutral atoms that are in a metastable state, but have not been ionized, and all excited noble gases (such as helium and argon) have metastable states. And we construe the claim term “plasma” as “a collection of ions, electrons, ground state atoms, excited atoms, and metastable atoms,” consistent with the term’s ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the Specification of the ’779 patent. Furthermore, we construe the claim term “multi-step ionization process” broadly, but reasonably, as “an ionization process having at least two distinct steps,” in light of the Specification. GlobalFoundries takes the position that Iwamura’s second plasma generation unit is an energy source that ionizes at least a portion of the excited or metastable atoms inside a chamber, generating a plasma with a multi-step ionization process. Pet. 38–44, 48–49. As GlobalFoundries points out, for the first step, Iwamura’s pre-excitation unit and/or first plasma generation unit raise the excitation level of the gas, generating excited or metastable atoms from ground state atoms. Id.; Ex. 1407, 7:55– IPR2014-00917 Patent 6,805,779 B2 15 60, 9:46–48, Figs. 1, 2. And for the second step, Iwamura’s second plasma generation unit ionizes at least a portion of the excited or metastable atoms, generating a plasma inside the chamber. Ex. 1407, 8:32–46, 9:8–12, Figs. 1, 2. Zond counters that Iwamura’s second plasma generation unit does not ionize excited or metastable atoms because “the atoms are already ionized before they enter the chamber.” PO Resp. 46–49, 56–58. As support, Dr. Hartsough testifies that “the atoms entering Iwamura’s chamber are not excited or metastable, but rather, are activated (i.e., ionized to a plasma).” Id.; Ex. 2005 ¶¶ 71–73 (emphasis added). Zond’s argument and Dr. Hartsough’s testimony, however, are predicated on the premise that the gas is fully ionized, containing no excited or metastable atoms, before reaching Iwamura’s second plasma generation unit inside the chamber. That premise squarely contradicts Iwamura’s disclosure. Notably, Iwamura explicitly discloses that “the first plasma generation unit preactivates the gas and the second plasma generation unit activates the gas and forms activated gas species.” Ex. 1407, 2:61–65 (emphasis added). Iwamura also describes “preactivation” to mean that “the gas is not yet fully ionized, but its excitation level is high.” Id. at 2:34–39 (“[T]he gas reaching the downstream plasma generation position maintains the ionized or near-ionized state, formed by preactivation, i.e., the gas is not yet fully ionized, but its excitation level is high, due to the upstream plasma preactivation.”) (emphasis added). Moreover, if the gas were fully ionized before reaching Iwamura’s second plasma generation unit, as Zond alleges, there would be no reason to IPR2014-00917 Patent 6,805,779 B2 16 have a second plasma generation unit, much less having a second plasma generation unit to generate a plasma inside the chamber. On the contrary, Iwamura explicitly states that “a second plasma generation unit [is] for activating the gas to generate a plasma downstream along the flow path of the gas.” Id. at 2:59–61 (emphasis added). Iwamura further discloses that the gas is activated by the second plasma generation unit—increasing the density and excitation levels of activated gas species and generating a plasma—to improve uniformity and treatment rate. Id. at 8:4–46, Fig. 1. In fact, Dr. Hartsough in his cross-examination testimony acknowledges, and Dr. Kortshagen confirms, that the gas reaching Iwamura’s second plasma generation unit includes excited and metastable atoms. Ex. 1419, 42:9–43:17, 74:2–76:4; Ex. 1417 ¶¶ 25–33, 89. Zond’s contention that a plasma does not include a volume of excited or metastable atoms also is inconsistent with the ordinary and customary meaning of the term “plasma”—namely, “a collection of ions, electrons, ground state atoms, excited atoms, and metastable atoms.” As discussed above, both Dr. Kortshagen and Dr. Hartsough agree with that definition. Ex. 1402 ¶¶ 22–28; Ex. 1419, 42:9–43:17. Furthermore, the Specification of the ’779 patent discloses that a plasma includes charged particles as well as neutral excited and metastable atoms. Ex. 1401, 8:43–48. More importantly, as the Specification explains, a volume of excited or metastable atoms is generated when “a discharge is created in a discharge region” between a pair of electrodes, similar to Iwamura’s first plasma generation unit, energizing and ionizing a portion of ground state atoms. Id. at 14:4– 14:23 (“Some of the ground state atoms 208 are directly ionized, which IPR2014-00917 Patent 6,805,779 B2 17 releases ions 424 and electrons 426 into the stream of metastable atoms 218. . . . The metastable atoms 218, the free ions 424 and electrons 426 then pass through the output 423 of the metastable atom source 402.”) (emphasis added). Therefore, even in the embodiment in which Iwamura’s first generation unit generates a plasma, one with ordinary skill in the art would have recognized that the plasma reaching Iwamura’s second generation unit includes a volume of excited and metastable atoms. Given the evidence in this record, we determine that GlobalFoundries has demonstrated, by a preponderance of the evidence, that the combination of Iwamura, Angelbeck, and Pinsley describes an energy source that is coupled to the volume of excited or metastable atoms confined by a plasma chamber, and that raises an energy of excited or metastable atoms so that at least a portion of the excited or metastable atoms is ionized, thereby generating a plasma with a multi-step ionization process, as recited in independent claims 1, 18, 30, and 44. Generating excited or metastable atoms Each of independent claims 1, 18, 30, and 44 requires generating excited or metastable atoms from ground state atoms. See, e.g., Ex. 1401, 21:17–18, 22:34–35. In its Petition, GlobalFoundries asserts that Iwamura’s pre-excitation unit and/or the first plasma generation unit describe an excited or metastable atom source for generating excited or metastable atoms from ground state atoms, as recited in the claims at issue. Pet. 38–44, 50–51, 59. Zond counters that Iwamura’s first plasma generation unit generates a plasma, and not excited or metastable atoms. PO Resp. 33–37. Zond alleges IPR2014-00917 Patent 6,805,779 B2 18 that Iwamura does not mention the density of excited atoms, but rather plasma density. Id. As support, Dr. Hartsough testifies that “Iwamura’s first plasma generation unit generates ionized atoms, i.e., a plasma or ‘activated gas’ per Iwamura’s teaching.” Ex. 2005 ¶ 50. We are not persuaded by Zond’s arguments and Dr. Hartsough’s testimony. An obviousness analysis is not an ipsissimis verbis test. See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). Rather, a prima facie case of obviousness is established when the prior art itself would appear to have suggested the claimed subject matter to one of ordinary skill in the art. In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976). Zond’s arguments and Dr. Hartsough’s testimony, once again, are predicated improperly on the premise that the gas is fully ionized, containing no excited or metastable atom, before reaching Iwamura’s second plasma generation unit. As we discussed above, that premise contradicts Iwamura’s disclosure and the ordinary and customary meaning of the term “plasma,” which includes excited and metastable atoms. Both Dr. Kortshagen and Dr. Hartsough, agree with that definition, which also is consistent with the Specification of the ’779 patent. Ex. 1402 ¶¶ 21–27; Ex. 1419, 42:9–43:17, 74:2–76:4; Ex. 1401, 1:7–8, 8:43–48. Notably, Iwamura explicitly discloses that the gas reaching the second plasma generation unit “is not yet fully ionized.” Ex. 1407, 2:34–38 (emphasis added). Furthermore, we do not share Zond’s view that Dr. Kortshagen’s cross-examination testimony—plasma density is not equivalent to the density of excited atoms—supports Zond’s argument that Iwamura’s gas reaching the second plasma generation unit does not contain excited or IPR2014-00917 Patent 6,805,779 B2 19 metastable atoms. PO Resp. 36–37 (citing Ex. 2004, 232:5–9). One of ordinary skill in the art would have appreciated that, in a unit volume of gas containing charged particles and excited atoms, the plasma density refers to the number of ions or electrons, whereas the density of excited atoms refers to the number of excited atoms. Ex. 1402 ¶¶ 21–27. It is irrelevant that the plasma density is not equivalent to the density of excited atoms, in that Iwamura’s gas could have more excited atoms than ions or electrons. Therefore, Dr. Kortshagen’s cross-examination testimony does not undermine GlobalFoundries’s evidence, showing that Iwamura’s pre-excitation unit and the first plasma generation unit, either alone or in combination, generate a volume of excited or metastable atoms (see, e.g., Ex. 1407, 2:61–65, 2:31–65; Ex. 1417 ¶¶ 25–33, 89; Ex. 1419, 42:9–25, 74:2–76:4). For the foregoing reasons, we are persuaded that GlobalFoundries has demonstrated, by a preponderance of the evidence, that the combination of Iwamura, Angelbeck, and Pinsley would render obvious an excited or metastable source for generating excited or metastable atoms from ground state atoms, as required by claims 1, 18, 30, and 44. Plasma chamber Claim 1 recites “a plasma chamber that is coupled to the excited atom source, the plasma chamber confining a volume of excited atoms generated by the excited atom source; and an energy source that is coupled to the volume of excited atoms confined by the plasma chamber.” Ex. 1401, IPR2014-00917 Patent 6,805,779 B2 20 21:19–24 (emphases added). Claims 18 and 44 each recite similar limitations. GlobalFoundries asserts that Iwamura discloses a plasma chamber, as recited in these claims, because “Iwamura’s pre-excitation unit and the first plasma generation unit, either alone or in combination, meet the excited atom source, and are positioned upstream from and coupled to the plasma treatment chamber.” Pet. 47–49. Zond counters that Iwamura’s plasma chamber is not coupled to the excited atom source, because the chamber is not coupled directly to the pre-excitation unit. PO Resp. 42–47. Zond also argues that Iwamura does not disclose a chamber confining a volume of excited or metastable atoms “because in Iwamura’s system, the plasma and not the excited or metastable atoms enter the plasma chamber.” Id. Dr. Hartsough testifies that Iwamura does not recite expressly the terms “excited” or “metastable,” but rather Iwamura discloses that the upstream plasma generation “is generating an activated (pre-activated) plasma gas, as opposed to an excited gas (i.e., excited atom source) as claimed.” Ex. 2005 ¶¶ 64–65, 70. We are not persuaded by Zond’s arguments and Dr. Hartsough’s testimony as they require Iwamura to recite expressly certain claim terms. An obviousness analysis is not an ipsissimis verbis test. See Gleave, 560 F.3d at 1334. More significantly, Zond’s arguments and Dr. Hartsough’s testimony, once again, are predicated on the premise that the gas entering Iwamura’s plasma chamber is fully ionized, containing no excited or metastable atoms. As discussed previously, that premise contradicts Iwamura’s disclosure and the ordinary and customary meaning IPR2014-00917 Patent 6,805,779 B2 21 of the term “plasma,” which contains excited and metastable atoms. Notably, Iwamura explicitly discloses that the gas reaching the second plasma generation unit inside the chamber “is not yet fully ionized.” Ex. 1407, 2:34–39 (emphasis added). Zond’s arguments also are not commensurate with the scope of the claims at issue. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (stating that a limitation not appearing in the claims cannot be relied upon for patentability). Zond attempts to import improperly a limitation—directly coupled—from a preferred embodiment disclosed in the Specification into the claims. See Van Geuns, 988 F.2d at 1184. Nothing in the claims at issue here requires the plasma chamber to be directly coupled to the excited or metastable atom source. In fact, Zond’s expert, Dr. Hartsough in his cross-examination testimony confirms that, in the context of the ’779 patent, the term “coupling” includes an indirect connection. Ex. 1419, 108:13– 109:22. In any event, even if the claims at issue require a direct coupling, Zond’s arguments are still unavailing, as they predicate that only Iwamura’s pre-excitation unit is the excited or metastable atom source. As discussed above, GlobalFoundries asserts that Iwamura’s pre-excitation unit and the first plasma generation unit, either alone or in combination, disclose the excited or metastable atom source. Pet. 47–49. Figure 1 of Iwamura clearly shows that the pre-excitation unit and first plasma generation unit are disposed on the wall of gas supply pipe that is coupled to the plasma chamber. Ex. 1407, 6:67–7:17, Fig. 1. Iwamura also states that “[t]reatment chamber 10 is in fluid communication with gas supply 20.” Id. at 7:8–27, IPR2014-00917 Patent 6,805,779 B2 22 Fig. 1. Zond’s expert, Dr. Hartsough, confirms that Iwamura’s first plasma generation unit, which includes electrodes 26a and 26b as shown in Figure 1 of Iwamura, “is coupled to the chamber.” Ex. 1419, 92:12–13. We do not agree with Zond’s argument that Dr. Kortshagen’s refusal to mark the location of the “coupling” on a figure, during cross-examination, undermines GlobalFoundries’s contention. PO Resp. 45 (citing Ex. 2004, 174:24–175:7). In fact, during the same cross-examination, Dr. Kortshagen already explained with sufficient specificity as to how Figure 1 of Iwamura shows the pre-excitation unit and first plasma generation unit are coupled to the plasma chamber: So if we look at Figure 1 again, for example, and there is a plasma chamber, which is number 10, and then if we consider the preexcitation unit and the first plasma generation unit A as the metastable atom source, that metastable atom source includes the gas supply line 20, so this is the metastable atom source which is coupled to the plasma chamber, and because the metastable atoms from Iwamura’s metastable atom source will be entering the plasma chamber, the plasma chamber does confine the metastable atoms that are generated by the metastable atom source. Ex. 2004, 170:17–171:7 (emphases added). We credit Dr. Kortshagen’s cross-examination testimony as his explanation is consistent with Iwamura’s disclosure and his original direct testimony. See Ex. 1407, 7:8–27, Fig. 1; Ex. 1402 ¶ 125. Based on the evidence before us, we determine that GlobalFoundries has established, by a preponderance of the evidence, that the combination of Iwamura, Angelbeck, and Pinsley discloses “a plasma chamber that is coupled to the excited [or metastable] atom source confining a volume of IPR2014-00917 Patent 6,805,779 B2 23 excited [or metastable] atoms generated by the excited [or metastable] atom source; and an energy source that is coupled to the volume of excited atoms confined by the plasma chamber,” as recited in claims 1, 18, and 44. Magnetic field Each of independent claims 1 and 18 requires an excited or metastable atom source comprising a magnet that generates a magnetic field for substantially trapping electrons proximate to the ground state atoms. Ex. 1401, 21:14–17, 22:31–34. Claim 30 requires a similar limitation. Id. at 23:26–28. GlobalFoundries asserts that the combination of Iwamura, Angelbeck, and Pinsley renders obvious the aforementioned limitation. Pet. 44–47, 59– 60. GlobalFoundries acknowledges that Iwamura does not disclose a magnet for generating a magnetic field. Id. Nevertheless, GlobalFoundries maintains that it was well-known in the art at the time of the invention to use a magnet for generating a magnetic field for substantially trapping electrons in a plasma generation apparatus, as evidenced by Pinsley and Angelbeck. Id. (citing Ex. 1405, 2:43–60; Ex. 1406, 1:36–41, 2:18–20, 2:50–51, 2:66– 67, Fig. 1). For example, GlobalFoundries points out that Angelbeck discloses a plasma apparatus having a magnet to generate a transverse magnetic field for creating a high density of excited atoms. Pet. 44–47, 59–60; Ex. 1406, 1:36–41, 2:18–20, 2:29–33. The transverse magnetic field is applied by a magnet with pole pieces for trapping electrons. Ex. 1406, 2:45–54, 2:57–59. According to Angelbeck, such a transverse magnetic field creates a high IPR2014-00917 Patent 6,805,779 B2 24 density of excited atoms and increases the efficiency of excitation. Id. at 1:36–41 (“It has been found that a transverse magnetic field applied to a DC discharge gas laser increases the electron temperature and hence the efficiency of excitation . . . .”), 2:18–20 (“A high gas pressure P is advantageous . . . for creating a high density of excited atoms in the laser.”), 2:29–33 (“This invention . . . produces the same temperature at a higher pressure by applying a transverse magnetic field.”). Dr. Kortshagen testifies that, in light of the prior art teachings, one of ordinary skill in the art would have been motivated to use a magnet with Iwamura’s pre-excitation unit and first plasma generation unit—which are located proximate to the ground state atoms source (gas supply 20)—for trapping electrons in order to increase the efficiency of excitation. Ex. 1402 ¶ 123 (citing Ex. 1406, 1:36–41, 2:66–67). Zond counters that the combination of Iwamura, Angelbeck, and Pinsley does not teach generating a magnetic field substantially traps electrons proximate to the ground state atoms. PO Resp. 37–42. In particular, Zond alleges that Angelbeck’s enclosed tube does not receive ground state atoms from a feed gas source, as required by the claims at issue. Id. Zond further alleges that Angelbeck’s system produces a plasma, not excited or metastable atoms. Id. Zond also maintains that Pinsley’s magnetic fields do not trap electrons, as they can still easily flow to the anode. Id. Nonobviousness, however, cannot be established by attacking references individually where, as here, the ground of unpatentability is based upon the teachings of a combination of references. In re Keller, 642 F.2d IPR2014-00917 Patent 6,805,779 B2 25 413, 425 (CCPA 1981). GlobalFoundries relies upon Angelbeck for the disclosure of trapping electrons using a magnetic field, and not for the feed gas source, which is taught by Iwamura. Pet. 44–47. There is no dispute that Iwamura’s gas supply, supplying a feed gas that contains ground state atoms, discloses “a feed gas source,” as recited in claims 1, 18, and 44. Ex. 1407, 2:5–7, 7:48–50 (“an inert gas such as helium or argon is introduced through gas supply 20”). Zond’s arguments also are predicated improperly on the premise that the gas in the chamber of Angelbeck is fully ionized, containing no excited or metastable atoms. That premise contradicts the express disclosure of Angelbeck, which describes a system for “creating a high density of excited atoms,” Ex. 1406, 2:18–20 (emphasis added), and the ordinary and customary meaning of the term “plasma,” which includes excited and metastable atoms. As discussed above, both Dr. Kortshagen and Dr. Hartsough agree with that definition, which also is consistent with the Specification of the ’779 patent. Ex. 1402 ¶¶ 22–28; Ex. 1419, 42:9–43:17; Ex. 1401, 1:7–8, 8:43–48. Interestingly, Zond’s other arguments acknowledge that Angelbeck’s system generates excited atoms. PO Resp. 25–26 (“The excited atoms in Angelbeck’s laser or Pinsley’s laser, however, must return to their ground state.” (emphasis added)). Zond’s arguments also narrowly focus on a few sentences in the prior art references, failing to consider the references as a whole, in the context of the knowledge that a person of ordinary skill in the art would have had with respect to using magnets to trap electrons in a plasma apparatus. See Randall Mfg. v. Rea, 733 F.3d 1355, 1362–63 (Fed. Cir. 2013). The level of IPR2014-00917 Patent 6,805,779 B2 26 ordinary skill in the art is reflected by the prior art of record. GPAC, 57 F.3d at 1579. When Pinsley and Angelbeck are considered properly in their entirety, a person having ordinary skill in the art would have appreciated that the magnets of Pinsley and Angelbeck substantially trap electrons in the same manner as disclosed in the ’779 patent. As GlobalFoundries points out, applying a magnetic field in a plasma apparatus to trap electrons is disclosed in both Pinsley and Angelbeck. Pet. 44–47 (citing, e.g., Ex. 1405, 2:43–60; Ex. 1406, 1:36–41, 2:18–20, 2:50–51, 2:66–67, Fig. 1). For instance, Pinsley discloses a plasma apparatus that utilizes a magnet to generate a magnetic field for trapping electrons. Ex. 1405, 1:51–54, 2:43–47. Pinsley’s sole Figure is reproduced below with annotations added by Dr. Kortshagen (Ex. 1417 ¶ 40). As shown in the annotated figure above, conduit 10 includes anode 18, cathode 19, and magnets 24, 26, for generating a magnetic field. Ex. 1405, 2:27–42. According to Pinsley, “the interaction between the current and the magnetic field will result in an upstream force as indicated IPR2014-00917 Patent 6,805,779 B2 27 by the force vector 32,” and “[t]his force is exerted upon the electrons, and tends to maintain the electrons in an area between the anode and cathode,” trapping the electrons. Id. at 2:43–47 (emphasis added). Dr. Kortshagen testifies that one of ordinary skill in the art would have understood that Pinsley’s magnets 24 and 26 will produce magnetic field lines that converge near the magnets. Ex. 1417 ¶ 41. Dr. Kortshagen further testifies that Pinsley’s magnetic field lines converge near the magnets similar to the magnetic field lines depicted in Figure 7A of the ’779 patent, and, like the ’779 patent, Pinsley’s configuration can substantially trap electrons. Ex. 1417 ¶¶ 39–46. In fact, Zond’s expert, Dr. Hartsough in his cross-examination testimony acknowledges that converging magnetic field lines will substantially trap electrons. Ex. 1419, 123:4–13. Based on the evidence in this record, we credit Dr. Kortshagen’s testimony (Ex. 1417 ¶¶ 39–46, 58–59) that magnets, such as those disclosed in Pinsley and Angelbeck, generate a magnetic field that substantially traps electrons in a plasma apparatus. Notably, the Admitted Prior Art (Figure 1 of the ’779 patent) discloses a plasma sputtering apparatus, having magnets that generates magnetic field to trap electrons. Ex. 1401, 3:9–18 (“The magnetic field 132 is shaped to trap and concentrate secondary electrons proximate to the target surface.”). Dr. Hartsough acknowledges that, since the mid-1970s, using magnets for trapping electrons in magnetron sputtering systems was well-known in the art. Ex. 1419, 20:13–21:1. Both Dr. Kortshagen’s testimony (Ex. 1417 ¶¶ 39–46, 58–59) and Dr. Hartsough’s cross-examination testimony (Ex. 1419, 123:4–13) are consistent with the prior art of record, including the Admitted Prior Art, IPR2014-00917 Patent 6,805,779 B2 28 which recognizes a magnet field is strongest at the poles of the magnet and weakest in the region at the center between the poles (Ex. 1401, 3:12–13). We also are not persuaded by Zond’s argument that Pinsley’s magnetic field does not trap electrons, as they can still easily flow to the anode. PO Resp. 37–42. Dr. Hartsough acknowledges that whether the trapped electrons flow to the anode is immaterial to the teaching of trapping electrons using a magnetic field, because most of the trapped electrons, including those illustrated by Figure 7A of the ’779 patent, will flow to the anode. Ex. 1419, 139:20–24. Furthermore, Pinsley discloses that the “interaction between the current and the magnetic field will result in an upstream force [and this] force is exerted upon the electrons, and tends to maintain the electrons in an area between the anode and cathode.” Ex. 1405, 2:43–48. As discussed above, the prior art of record clearly shows that it was well-known in the art at the time of the invention to use magnets in a plasma apparatus for trapping electrons. Based on the prior art of record, we agree with Dr. Kortshagen that “the use of magnets and their corresponding magnetic fields to trap electrons . . . was already known in the prior art,” at the time of the invention. Ex. 1417 ¶ 37. In view of the foregoing, we determine that GlobalFoundries has established, by a preponderance of the evidence, that the combination of Iwamura, Angelbeck, and Pinsley discloses an excited or metastable atom source comprising a magnet that generates a magnetic field for substantially trapping electrons proximate to the ground state atoms, as recited in claims 1, 18, and 30. IPR2014-00917 Patent 6,805,779 B2 29 Rationale to combine Zond asserts that one of ordinary skill in the art “would have been dissuaded from using a gas laser of Pinsley or Angelbeck to achieve the claimed plasma generation apparatus of the ’779 patent because the high energy atoms are not maintained in that state in a gas laser and instead, are used to create light.” PO Resp. 22–23. To that end, Zond advances several arguments. Id. at 24–27, 38–42. First, Zond alleges that the “excited atoms in Angelbeck’s laser or Pinsley’s laser . . . must return to their ground state to release energy so that the laser will operate according to its intended purpose: to emit light.” Id. at 25–26. We do not find that argument persuasive. As an initial matter, whether the excited atoms return to a ground state is immaterial to the teachings of Angelbeck and Pinsley of how to increase the efficiency of exciting atoms using magnets. Ex. 1406, 1:36–41; Ex. 1405, 2:43–48. One of ordinary skill in the art would have understood that, as a matter of plasma physics, excited atoms generated by plasma generators may return to their ground state as they flow through the chamber. See Ex. 1417 ¶ 65. Insofar as Zond argues that the proposed combination of Iwamura, Angelbeck, and Pinsley would change the principle of operation of Angelbeck or Pinsley, we are not persuaded. We are cognizant that if the proposed combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious. See In re Ratti, 270 F.2d 810, 813 (CCPA 1959). Zond’s argument, however, fails IPR2014-00917 Patent 6,805,779 B2 30 to recognize that “the prior art invention being modified” in the combination at issue here is Iwamura’s plasma treatment apparatus for generating a stable plasma with a multi-step ionization process to treat a semiconductor wafer, and not Angelbeck’s or Pinsley’s apparatus. GlobalFoundries relies upon Angelbeck and Pinsley only for the disclosure of using a magnetic field for trapping electrons. Pet. 44–47. Zond does not explain adequately as to why using a magnet to generate a magnetic field with Iwamura’s pre-excitation unit and first plasma generation unit would change the principle of operation of Iwamura’s plasma apparatus. In fact, Iwamura’s plasma apparatus, as modified in view of Angelbeck and Pinsley, would have operated on the same principles as before—namely, generating a plasma with a multi-step ionization process—which is the same as that in the ’779 patent (Ex. 1401, 21:9–11, 23:24–25). See In re Umbarger, 407 F.2d 425, 430–31 (CCPA 1969) (finding Ratti inapplicable where the modified apparatus will operate “on the same principles as before”). Second, Zond argues that “both Pinsley and Angelbeck relate to emission of light from lasers,” whereas “the invention of the ’779 patent confines the excited atoms after they are transformed from the ground state atoms so that they can later be ionized.” PO Resp. 22–23, 25–26. Insofar as Zond argues that Pinsley and Angelbeck are non-analogous art, we do not find such an argument persuasive. A prior-art reference is considered to be analogous if it is either: (1) from the same field of endeavor, regardless of the problem addressed; or (2) reasonably pertinent to the particular problem with which the inventor is concerned, regardless of the field of endeavor. See In re Clay, 966 F.2d 656, IPR2014-00917 Patent 6,805,779 B2 31 658–59 (Fed. Cir. 1992). “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Id. at 659. In that regard, “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.” KSR, 550 U.S. at 417. Here, the field of plasma generation is not limited to the particular type of plasma chamber disclosed in the ’779 patent, as Zond suggests. On the contrary, the prior art of record shows that one of ordinary skill in the art at the time of the invention would have recognized that plasma treatment systems and gas lasers are from the same field of endeavor, and that effects observed in one may be applicable to the other, as explained by Kudryavtsev. Pet. 46–47; Ex. 1404, 30, 34; Ex. 1402 ¶ 124. In fact, in Pinsley and Angelbeck, the gas is excited in a region between a pair of anode and cathode electrodes to generate a plasma, similar to the ’779 patent. Ex. 1405, 2:31–36; Ex. 1406, 2:45–56; Ex. 1401, 6:21–23 (“Numerous other cathode and anode configurations known in the art can be used with the plasma generator of the present invention.”), Figs. 1–2. In short, both Pinsley and Angelbeck are analogous art because they are within the same field of endeavor as the ’779 patent—namely, plasma generation. Additionally, Pinsley and Angelbeck are reasonably pertinent to the problem addressed by the ’779 patent, at least with respect to generating a magnetic field and using the magnetic field to excite ground-state gas atoms efficiently. As we discussed previously, both Pinsley and Angelbeck IPR2014-00917 Patent 6,805,779 B2 32 disclose the application of a magnetic field to improve the efficiency of exciting atoms. Ex. 1405, 2:43–48, Ex. 1406, 1:36–41. Therefore, one with ordinary skill in the art would have looked to the teachings of Pinsley and Angelbeck for how to increase the efficiency of exciting gas atoms for generating a plasma. Third, Zond contends that Angelbeck combined with Iwamura and Pinsley teaches away from the claimed subject matter of the ’799 patent because Angelbeck’s anode and cathode force the electrons to the tube wall, where they are removed from the plasma. PO Resp. 38–42. As support, Dr. Hartsough testifies that Angelbeck “teaches deflecting the electrons toward the tube walls which, in a flowing feed gas, would have no trapping effect whatsoever on the electrons.” Ex. 2005 ¶ 62. Zond’s argument and expert testimony, however, improperly rest on the notion that all of the electrons, in Angelbeck, are lost to the wall. On the contrary, Angelbeck specifically indicates that “[t]he current-excited discharge passed through the gas within tube 10 creates a plasma in which the atoms are ionized and the electrons are freed.” Ex. 1406, 2:54–56 (emphasis added). More importantly, as discussed above, Angelbeck teaches that a magnetic field creates a high density of excited atoms and increases the efficiency of excitation. Id. at 1:36–41, 2:18–20, 2:29–33. Given the evidence before us, we do not discern that Angelbeck criticizes, discredits, or otherwise discourages investigation into using magnetic field to substantially trap electrons. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (noting that a reference does not teach away if it merely expresses a general preference for an alternative invention but does not “criticize, IPR2014-00917 Patent 6,805,779 B2 33 discredit, or otherwise discourage” investigation into the invention claimed); In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971) (“Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure of non-preferred embodiments.”). Therefore, a person of ordinary skill would not have been dissuaded from combining Iwamura with Angelbeck and Pinsley. Finally, Zond argues that GlobalFoundries fails “to provide experimental data or other objective evidence indicating that the structure and process of Iwamura would produce the particular plasma process of the ’779 patent” if it were modified by Angelbeck and Pinsley. PO Resp. 24–27 (citing Epistar v. Trs. of Boston Univ., Case IPR2013-00298 (PTAB Nov. 15, 2013) (Paper 18)). Zond’s arguments, however, narrowly focus on the physical differences between the prior art systems, and improperly attempt to bodily incorporate one system into the other. PO Resp. 24–27. Zond’s reliance on its interpretation of Epistar, a non-precedential Board decision, is misplaced. “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); In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (noting that the criterion for obviousness is not whether the references can be combined physically, but whether the claimed invention is rendered obvious by the teachings of the prior art as a whole). In that regard, one with ordinary skill in the art is not compelled to follow blindly the teaching of one prior art reference over the other without the exercise of independent judgment. Lear IPR2014-00917 Patent 6,805,779 B2 34 Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984); see also KSR, 550 U.S. at 420–21 (stating that 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”). Here, GlobalFoundries relies upon Angelbeck and Pinsley to show that generating a magnetic field to trap electrons in a plasma apparatus was well-known in the art at the time of the invention. Pet. 44–47. Indeed, both Angelbeck and Pinsley teach the use of a magnet to generate a magnetic field for increasing the efficiency of exciting atoms in a plasma apparatus. Ex. 1405, 2:43–48; Ex. 1406, 1:36–41. Zond’s expert, Dr. Hartsough, also acknowledges that, since the mid-1970s, using magnets for trapping electrons in magnetron sputtering systems was well-known in the art. Ex. 1419, 20:13–21:1. Moreover, the Admitted Prior Art (Figure 1 of the ’779 patent) discloses a plasma sputtering apparatus, having magnets that generates magnetic field to trap electrons. Ex. 1401, 3:9–18 (“The magnetic field 132 is shaped to trap and concentrate secondary electrons proximate to the target surface.”). Given the evidence before us, we agree with Dr. Kortshagen that one with ordinary skill in the art would have been motivated, in view of Angelbeck and Pinsley, to use a magnet with Iwamura’s pre-excitation unit and first plasma generation unit—which are located proximate to the ground state atoms source (gas supply 20)—for generating a magnetic field to trap electrons, in order to increase the efficiency of excitation of ground state atoms. Ex. 1402 ¶ 139. We credit Dr. Kortshagen’s testimony, as it is IPR2014-00917 Patent 6,805,779 B2 35 consistent with the disclosures of Angelbeck and Pinsley, and other prior art of record. Upon consideration of the parties’ contentions and the evidence in this entire record, we determine that GlobalFoundries has demonstrated that combining the technical disclosures of Iwamura, Angelbeck, and Pinsley is 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.”). Therefore, GlobalFoundries has provided an articulated reason with rational underpinnings for modifying Iwamura in view of Angelbeck and Pinsley. Trapping electrons and ions Claim 38 depends directly from claim 30, and further recites “trapping electrons and ions in the volume of metastable atoms.” Ex. 1401, 23:61–62. GlobalFoundries asserts that the combination of Iwamura, Angelbeck, and Pinsley teaches this limitation because Iwamura’s first plasma generation unit that includes an ion capture electrode captures electrons and ions in the volume of excited or metastable atoms. Pet. 57–60; Ex. 1407, 11:52–55, Fig. 9. Zond disagrees, arguing that “Iwamura teaches ion capture only from the plasma and not from the volume of metastable atoms.” PO Resp. 58–60 (citing Ex. 1407, 11:64–12:4). To support Zond’s contention, Dr. Hartsough IPR2014-00917 Patent 6,805,779 B2 36 testifies that Iwamura “does not teach action on or by the volume of excited or metastable atoms.” Ex. 2005 ¶¶ 147–49, 153. Zond’s arguments and Dr. Hartsough’s testimony, however, are predicated improperly on premise that the gas reaching Iwamura’s second plasma generation unit is fully ionized, containing no excited or metastable atoms. As discussed previously, that premise contradicts Iwamura’s disclosure and the ordinary and customary meaning of the term “plasma,” which includes charged particles (ions and electrons) as well as neutral atoms (excited and metastable atoms). Both Dr. Kortshagen and Dr. Hartsough, agree with that definition, which also is consistent with the Specification of the ’779 patent. Ex. 1402 ¶¶ 21–27; Ex. 1419, 42:9–43:17, 74:2–76:4; Ex. 1401, 1:7–8, 8:43–48. Notably, Iwamura explicitly discloses that the gas reaching the second plasma generation unit inside the chamber “is not yet fully ionized.” Ex. 1407, 2:34–39 (emphasis added). Additionally, Zond’s reliance on a cited portion of Iwamura is misplaced. See PO Resp. 59–60 (citing Ex. 1407, 11:64–12:4). In fact, that portion of Iwamura states “the provision of the two-stage plasma regions A and B increases the density of neutral activated gas species and their excitation levels in downstream plasma region B.” Ex. 1307, 11:64–12:4 (emphasis added). One with ordinary skill in the art would have understood that “neutral activated gas species” include neutral excited and metastable atoms. Ex. 1402 ¶¶ 21–27. Therefore, Zond’s argument that the gas reaching Iwamura’s second generation unit does not include excited and metastable atoms also directly contradicts the portion of Iwamura cited by Zond. IPR2014-00917 Patent 6,805,779 B2 37 Zond’s argument that Iwamura’s ion capture electrode does not “trap” ions and electrons because they are “removed from any volume of gas, no matter what its state” also is unavailing. PO Resp. 59; Ex. 2005 ¶ 147. Zond’s expert, Dr. Hartsough, acknowledges that the electron/ion absorber disclosed in the ’779 patent, likewise, removes ions and electrons from the volume of gas. Ex. 1419, 153:25–154:10. Moreover, as Dr. Kortshagen explains, one of ordinary skill in the art would have recognized that Iwamura’s ion capture electrode traps electrons and ions in the same manner as disclosed in the ’779 patent, using a pair of electrodes. Ex. 1417 ¶¶ 112– 116; Ex. 1401, 19:56–20:6, Fig. 12A–12C. Figure 9 of Iwamura is reproduced below with purple and red annotations added by Dr. Kortshagen (Ex. 1417 ¶ 110): As annotated, Figure 9 of Iwamura shows the first pair of electrodes includes upper electrode 70a and ion capture electrode 80, which is located below the plasma region A to trap ions and electrons generated in that region. Ex. 1407, 11:46–55. Iwamura also discloses that “ion capture electrode 80 is formed from a wire grid or perforated metal sheet, and is connected to ground potential so as to capture charged particles such as IPR2014-00917 Patent 6,805,779 B2 38 ions and electrons.” Id. (emphasis added). Similarly, the electron/ion absorber disclosed in the ’779 patent includes a pair of electrodes: the first electrode is coupled to a power supply, and the second electrode is coupled to ground. Ex. 1401, 19:56–20:6, Fig. 12A. We credit Dr. Kortshagen’s testimony (Ex. 1417 ¶¶ 112–116) as it is consistent with the disclosures of Iwamura and the ’779 patent. Given the evidence before us, we determine that GlobalFoundries has demonstrated, by a preponderance of the evidence, that the combination of Iwamura, Angelbeck, and Pinsley discloses “trapping electrons and ions in the volume of metastable atoms,” as recited in claim 38. Inductively coupled discharge source Claim 44 recites “an inductively coupled discharge source that is coupled to the feed gas source, the inductively coupled discharge source generating excited atoms from the ground state atoms.” Ex. 1401, 24:53–54 (emphasis added). Claims 9 and 21 depend directly from claims 1 and 18, respectively, and further require the excited or metastable atom source to comprise an inductively coupled discharge source. Id. at 21:60–63, 22:57– 60. GlobalFoundries asserts that the combination of Iwamura, Angelbeck, Pinsley, and Gruber teaches “an inductively coupled discharge source,” as recited in claims 9, 21, and 44. Pet. 38–55. Zond counters that GlobalFoundries failed to show that it would have been obvious to combine Gruber’s gas laser with the plasma treatment apparatus of Iwamura with a reasonable expectation of success. PO Resp. 27–30, 52–54. Zond advances several arguments. Upon consideration of IPR2014-00917 Patent 6,805,779 B2 39 the evidence submitted by the parties, we are not persuaded by Zond’s arguments, and we address those arguments in turn below. First, Zond argues that Gruber does not disclose an excited atom source because it “clearly teaches the formation of a plasma.” Id. at 52–53 (citing Ex. 2005 ¶ 135; Ex. 1413, 4:5–21). Zond’s argument, however, is predicated on the premise that Gruber’s plasma is fully ionized, containing no excited atoms. As discussed previously, such a premise contradicts the ordinary and customary meaning of the term “plasma.” which contains ions and electrons as well as excited and metastable atoms. Interestingly, Zond’s other arguments acknowledge that Gruber’s inductively RF coupled discharge source generates excited atoms. See, e.g., PO Resp. 28 (“The excited atoms in Gruber’s laser, however, must return to their ground state.”), 28–29 (“Gruber’s laser has only one energy source that generates excited atoms.”) (emphases added). Moreover, as GlobalFoundries points out, Gruber specifically recognizes that an inductively coupled RF discharge source is an improved alternative to electrodes for exciting atoms. Pet. 52– 53 (citing Ex. 1413, Abs., 1:13–18). Dr. Hartsough in his cross examination testimony acknowledges, and Dr. Kortshagen confirms, that inductive coupling was a well-known mechanism at the time of the invention for generating excited atoms. Ex. 1402 ¶ 138; Ex. 1419, 195:25–196:2. Given the evidence before us, we are persuaded that one of ordinary skill in the art would have recognized that Gruber’s inductively coupled RF discharge source generates excited and metastable atoms. Second, Zond maintains that Gruber “has only one energy source that generates excited atoms,” while the claims require both an excited atom IPR2014-00917 Patent 6,805,779 B2 40 source and an energy source to generate a plasma. PO Resp. 28–30. Nonobviousness, however, cannot be established by attacking references individually where, as here, the ground of unpatentability is based upon the teachings of a combination of references. Keller, 642 F.2d at 426. Although Iwamura discloses using an excited atom source and an energy source to generate a plasma, GlobalFoundries nevertheless relies upon Gruber for teaching an inductively coupled discharge source for generating excited or metastable atoms, and Iwamura’s second plasma generation unit for teaching an energy source to ionize the excited or metastable atoms, generating a plasma with a multi-step ionization process, as required by claims 9, 21, and 44. Pet. 38–53. Third, Zond submits that Gruber’s excited atoms “must return to their ground state to release energy so that the laser will operate according to its intended purpose: to emit light.” PO Resp. 28. As Dr. Kortshagen testifies, however, whether the excited atoms return to a ground state is immaterial to Gruber’s teaching that an inductively coupled RF discharge source excites ground state atoms. Ex. 1417 ¶ 101. One of ordinary skill in the art would have understood that, as a matter of plasma physics, excited atoms generated by plasma generators may return to their ground state as they flow through the chamber. Id. ¶ 65. Insofar as Zond argues that the combination of prior art Iwamura, Angelbeck, Pinsley, and Gruber would change the principle of operation of Gruber’s apparatus, we also are not persuaded. Zond’s argument fails to recognize that Iwamura’s plasma treatment apparatus is the prior art invention being modified. Zond does not explain adequately as to why substituting an inductively coupled discharge source for Iwamura’s IPR2014-00917 Patent 6,805,779 B2 41 electrodes at the first plasma generation unit would change the principle of operation of Iwamura’s plasma apparatus. In fact, Iwamura’s plasma apparatus, as modified by Gruber, Angelbeck, and Pinsley, will operate on the same principles as before—generating a plasma with a multi-step ionization process. See Umbarger, 407 F.2d at 430–31 (finding Ratti inapplicable where the modified apparatus will operate “on the same principles as before”). Fourth, Zond takes the view that Gruber’s inductively coupled RF discharge source “is a direct contradiction to the ’779 patent (and plasma sputtering generally) in that the electrode in a plasma sputtering system necessarily has to reside in the chamber and come in contact with the plasma.” PO Resp. 29 (emphasis added). To substantiate that view, Zond directs our attention to the following portion of the ’779 patent: the cathode assembly 114 includes a sputtering target 116 that is used for sputtering materials onto a substrate or other work piece. . . . . The magnet generates a magnetic field that traps electrons in the plasma proximate to the cathode assembly 114 and, therefore, increases the plasma density in the region proximate to the cathode assembly 114. Ex. 1401, 6:27–39, Fig. 2. That portion of the ’779 patent, however, is not describing the excited or metastable atom source, but rather the energy source (the anode and cathode assembly) for ionizing the excited or metastable atoms—the second step in the multi-step ionization process. Zond’s argument conflates the energy source (used in the second step) with the excited or metastable atom source (used in the first step). In fact, Figure 9 of the ’779 patent discloses an inductively coupled discharge source (an excited or metastable atom source used in the first step) that does not IPR2014-00917 Patent 6,805,779 B2 42 reside inside the chamber, showing the inductive coil being outside of the chamber, like Gruber’s system. Ex. 1401, Fig. 9. The Specification of the ’779 patent describes that “[t]he metastable atom source 650 also includes an inductive coil 654 that surrounds the chamber 652.” Id. at 17:31–34, Fig. 9 (emphasis added). Finally, Zond argues that GlobalFoundries fails to provide experimental data or other objective evidence indicating that the modified structure and process of Iwamura would produce the particular plasma process of the ’779 patent. PO Resp. 29–30. However, “a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” Mouttet, 686 F.3d at 1332. “Rather, the test for obviousness is what the combined teachings of the references would have suggested to those having ordinary skill in the art.” Id. at 1333. Given the evidence in this entire record, we are persuaded that substituting Iwamura’s first pair of electrodes with an inductively coupled energy source is merely a substitution of one well-known element for another known element in the art, to yield the predictable result of generating excited atoms more efficiently, as described by Gruber. Ex. 1413, Abs., 1:11–27, 4:5–22; Ex. 1402 ¶ 139; Ex. 1417 ¶ 103. In consideration of the foregoing, we determine that GlobalFoundries has established, by a preponderance of the evidence, that the combination of Iwamura, Angelbeck, Pinsley, and Gruber teaches an inductively coupled discharge source, as recited in claims 9, 21, and 44. IPR2014-00917 Patent 6,805,779 B2 43 Electron beam Claims 7 and 20 depend from claims 1 and 18, respectively. These dependent claims further require the excited or metastable atom source to include an electron gun that directs an electron beam into the ground state atoms, exciting the ground state atoms to generate excited or metastable atoms. Ex. 1401, 21:50–53, 22:53–56. GlobalFoundries asserts that the combination of Iwamura, Angelbeck, Pinsley, and Wells would render the subject matter recited in these claims obvious. Pet. 55–57. To that end, GlobalFoundries asserts that exciting atoms with an electron beam from an electron gun to generate excited and metastable atoms was well-known at the time of the invention, as evidenced by Wells. Id. (citing Ex. 1214, 1:6–13, 13:16–23). GlobalFoundries also alleges that one of ordinary skill in the art would have been motivated, in light of Wells, to substitute an electron gun for Iwamura’s UV or microwave pre-excitation unit to generate excited and metastable atoms because such a combination is no more than a “mere substitution of one well-known element for another well-known element in the field, to yield predictable results.” Id. Zond counters that GlobalFoundries fails to explain why a person of ordinary skill in the art would have been motivated to combine the gas laser of Wells with the plasma treatment apparatus of Iwamura. PO Resp. 30–33; Ex. 2005 ¶ 130. Zond and Dr. Hartsough take the position that GlobalFoundries did not provide any explanation as to why one with ordinary skill in the art would have been motivated to modify the plasma treatment apparatus of Iwamura or how Wells’ photon source may be IPR2014-00917 Patent 6,805,779 B2 44 adapted to Iwamura’s system. PO Resp. 49–52; Ex. 2005 ¶ 132. According to Zond and its expert, GlobalFoundries fails “to explain why or how Wells’ two gas mixture in which one atom species stores energy in an upper level and the other atom or molecule collides and is depopulated can be adapted to Iwamura’s system.” PO Resp. 51; Ex. 2005 ¶ 132. Zond’s arguments and supporting expert testimony narrowly focus on the physical differences between the prior art systems, and attempt to bodily incorporate one system into the other. Obviousness does not require that all of the features of one reference be bodily incorporated into the other reference. Keller, 642 F.2d at 425. Rather, a prima facie case of obviousness is established when the prior art itself would appear to have suggested the claimed subject matter to one of ordinary skill in the art. See Rinehart, 531 F.2d at 1051. Here, GlobalFoundries relies upon Wells to disclose an electron gun to generate excited and metastable atoms. Pet. 55– 57 (citing Ex. 1414, 1:6–13, 13:16–23). Insofar as Zond argues that Wells is non-analogous art, we are not persuaded. As we explain above in our analysis in connection with Angelbeck and Pinsley, a reference disclosing a plasma generation laser is analogous art in that such lasers are within the plasma field of endeavor. Moreover, Wells is also reasonably pertinent to the problem addressed by the ’779 patent, at least with respect to generating excited or metastable atoms from ground state atoms. In short, Wells is analogous art. Based on the record before us, we determine that GlobalFoundries has articulated adequate reasoning based on a rational underpinning to explain why one with ordinary skill in the art, in light of Wells, would have utilized IPR2014-00917 Patent 6,805,779 B2 45 an electron gun in place of the UV or microwave mechanism of Iwamura for generating excited or metastable atoms from ground state atoms. See Pet. 55–57. For instance, to support its rationale to combine the prior art teachings, GlobalFoundries points out that Wells explicitly discloses the advantage of using an electron gun to excite gas atoms—“[t]he system produces a high population density of long lived excited atoms.” Id. (citing Ex. 1414, 1:6–13). In addition, Dr. Kortshagen testifies that it would have been obvious to one with ordinary skill in the art to utilize an electron gun, in light of Wells, instead of the UV or microwave mechanism utilized by Iwamura for generating excited or metastable atoms. Ex. 1402 ¶ 147. Zond does not dispute that using an electron beam to generate excited or metastable atoms from ground state atoms was well-known at the time of the invention. PO Resp. 30–33, 49–52. Nor does Zond explain why the simple substitution of an electron gun, as described by Wells, for the UV or microwave mechanism utilized by Iwamura to generate excited and metastable atoms would not yield a predictable result. See KSR, 550 U.S. at 417. Moreover, Zond does not provide sufficient or credible evidence that such a substitution would have been uniquely challenging or otherwise beyond the knowledge level of a person having ordinary skill in the art at the time of the invention. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Upon review of the evidence before us, we are persuaded that the collective teachings of Iwamura, Angelbeck, Pinsley, and Wells would have rendered the subject matter of claims 7 and 20 obvious. KSR, 550 U.S. at IPR2014-00917 Patent 6,805,779 B2 46 417 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Conclusion For the foregoing reasons, we determine that GlobalFoundries has demonstrated, by a preponderance of the evidence, that: (1) claim 38 is unpatentable over the combination of Iwamura, Angelbeck, and Pinsley; (2) claims 9, 21, and 44 are unpatentable over the combination of Iwamura, Angelbeck, Pinsley, and Gruber; and (3) claims 7 and 20 are unpatentable over the combination of Iwamura, Angelbeck, Pinsley, and Wells. III. CONCLUSION For the foregoing reasons, we determine that GlobalFoundries has demonstrated, by a preponderance of the evidence, that claims 7, 9, 20, 21, 38, and 44 are unpatentable based on the following grounds: Claims Basis References 38 § 103(a) Iwamura, Angelbeck, and Pinsley 9, 21, 44 § 103(a) Iwamura, Angelbeck, Pinsley, and Gruber 7, 20 § 103(a) Iwamura, Angelbeck, Pinsley, and Wells IV. ORDER In consideration of the foregoing, it is ORDERED that claims 7, 9, 20, 21, 38, and 44 of the ’779 patent are held unpatentable; and IPR2014-00917 Patent 6,805,779 B2 47 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. IPR2014-00917 Patent 6,805,779 B2 48 For PATENT OWNER: Gregory J. Gonsalves gonsalves@gonsalveslawfirm.com Bruce J. Barker bbarker@chsblaw.com Tarek Fahmi tarek.fahmi@ascendalaw.com For PETITIONER: Fujitsu: David L. McCombs david.mccombs.ipr@haynesboone.com David M O’Dell david.odell.ipr@haynesboone.com Richard C. Kim rckim@duanemorris.com GlobalFoundries: David M. Tennant dtennant@whitecase.com Dohm Chankong dohm.chankong@whitecase.com Gillette: David L. Cavanaugh david.cavanaugh@wilmerhale.com IPR2014-00917 Patent 6,805,779 B2 49 Larissa B. Park larissa.park@wilmerhale.com AMD: Brian M. Berliner bberliner@omm.com Ryan K. Yagura ryagura@omm.com Xin-Yi Zhou vzhou@omm.com Toshiba: Robinson Vu Robinson.vu@bakerbotts.com Renesas: John J. Feldhaus jfeldhaus@foley.com Pavan Agarwal pagarwal@foley.com Mike Houston mhouston@foley.com Copy with citationCopy as parenthetical citation