Globalfoundries U.S., Incv.Zond, LLC

Patent Trial and Appeal Board

Nov 3, 2015

10249202 (P.T.A.B. Nov. 3, 2015)

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.
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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.
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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.
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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
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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.
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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.
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II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable construction in light of the specification of the
patent in which they appear. 37 C.F.R. § 42.100(b); see 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”).
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“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
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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.
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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
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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.
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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.
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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
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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–
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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
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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
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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
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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
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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,
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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
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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,
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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
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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
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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
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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
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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
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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,
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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.
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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
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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,
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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
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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,
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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
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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
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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
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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.
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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
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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
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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
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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
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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
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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.
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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
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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
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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
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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
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FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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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
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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