Demaray LLC

Patent Trials and Appeals Board

May 12, 2021

IPR2021-00105 (P.T.A.B. May. 12, 2021)

Trials@uspto.gov Paper 13
571-272-7822 Date: May 12, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

APPLIED MATERIALS, INC.,
Petitioner,
v.
DEMARAY LLC,
Patent Owner.

IPR2021-00105
Patent 7,544,276 B2

Before CHRISTOPHER L. CRUMBLEY, KRISTINA M. KALAN, and
KIMBERLY McGRAW, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge KALAN.
Opinion Concurring filed by Administrative Patent Judge CRUMBLEY.

KALAN, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314
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Patent 7,544,276 B2

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I. INTRODUCTION
Applied Materials, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
requesting inter partes review of claims 1–13 of U.S. Patent No. 7,544,276
B2 (Ex. 1001, “the ’276 patent”). Demaray LLC (“Patent Owner”) filed a
Preliminary Response to the Petition (Paper 8, “Prelim. Resp.”). Pursuant to
our authorization (Paper 9), Petitioner filed a Reply (Paper 10, “Reply”), and
Patent Owner filed a Sur-Reply (Paper 12, “Sur-Reply”). Petitioner also
filed a Petitioner’s Notice Regarding Multiple Petitions (Paper 2 (“Notice”))
to which Patent Owner filed a Response (Paper 7 (“Notice Response”)).
To institute inter partes review, we must determine that the
information presented in the Petition shows “there is a reasonable likelihood
that the petitioner would prevail with respect to at least 1 of the claims
challenged in the petition.” 35 U.S.C. § 314(a). The Board, however, has
discretion to deny a petition even when a petitioner meets that threshold.
Id.; see, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016)
(“[T]he agency’s decision to deny a petition is a matter committed to the
Patent Office’s discretion.”); General Plastic Indus. Co. v. Canon Kabushiki
Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential as to
§ II.B.4.i) (recognizing the same); see also Patent Trial and Appeal Board
Consolidated Trial Practice Guide (Nov. 2019) (“CTPG”) 55–63, available
at https://www.uspto.gov/TrialPracticeGuideConsolidated (identifying
considerations that may warrant exercise of this discretion).
For the reasons discussed below, after considering the parties’
submissions and the evidence of record, we determine it is appropriate to
exercise our discretion and decline to institute inter partes review.
IPR2021-00105
Patent 7,544,276 B2

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A. Related Proceedings
The parties identify IPR2021-00103 as another proceeding filed by
Petitioner against the ’276 patent. Pet. 6–7; Paper 6, 2. Patent Owner also
identifies IPR2021-00104 and IPR2021-00106, which challenge U.S. Patent
No. 7,381,657 B2, as related matters. Paper 6, 2.
The parties also identify Applied Materials, Inc. v. Demaray LLC, No.
5-20-cv-05676 (N.D. Cal.); Demaray LLC v. Samsung Electronics Co., No.
6-20-cv-00636 (W.D. Tex.); and Demaray LLC v. Intel Corporation, No. 6-
20-cv-00634 (W.D. Tex.) as related matters. Pet. 6; Paper 6, 2. Each of
these proceedings involves the ’276 patent. Id.
B. Real Parties-In-Interest
Petitioner identifies Intel Corporation, Samsung Electronics Co., Ltd.,
Samsung Electronics America, Inc., Samsung Semiconductor, Inc., Samsung
Austin Semiconductor, LLC, and itself as real parties-in-interest. Pet. 6.
Patent Owner identifies itself as a real party-in-interest. Paper 6, 2.
C. The ’276 Patent
The ’276 patent, titled “Biased Pulse DC Reactive Sputtering of
Oxide Films,” relates to “deposition of oxide and oxynitride films and, in
particular, to deposition of oxide and oxynitride films by pulsed DC reactive
sputtering.” Ex. 1001, code (54), 1:12–14. The ’276 patent discloses that
typically, radio frequency (“RF”) sputtering has been used for deposition of
oxide dielectric films, but arcing can occur between sputtering target tiles
used to make such films, which causes contamination of the deposited films.
Id. at 2:25–30. The ’276 patent further states that reactors for RF sputtering,
particularly their power systems, are complicated. Id. at 2:30–38. The ’276
patent discloses that reactive DC magnetron sputtering of nonconductive
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Patent 7,544,276 B2

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oxides “is done rarely” because insulating surfaces accumulate charge
during deposition and result in arcing, which “can damage the power supply,
produce particles and degrade the properties of deposited oxide films.” Id.
at 4:44–52.
Figure 1A of the ’276 patent is reproduced below.

Figure 1A depicts a pulsed DC sputtering reactor. Id. at 3:26–27. The ’276
patent describes reactor apparatus 10 for sputtering of material from
target 12. Id. at 5:7–9. Magnet 20 is scanned across the top of target 12,
which reduces local erosion of target 12 during sputtering. Id. at 5:28–29,
8:47–55. Substrate 16 is opposite and parallel to target 12. Id. at 5:23–24.
Substrate 16 is capacitively coupled to electrode 17 via insulator 54. Id.
at 5:26–27. Electrode 17 can be coupled to RF power supply 18. Id.
at 5:27–28. The ’276 patent explains that columnar structures in a deposited
film can be detrimental for optical wave guide applications, but applying an
RF bias on substrate 16 during deposition can substantially eliminate
columnar structures. Id. at 5:60–67. The ’276 patent discloses that target 12
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Patent 7,544,276 B2

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functions as a cathode when power is applied to it, which creates plasma 53.
Id. at 5:24–26.
Target 12 is electrically coupled through filter 15 to pulsed DC power
supply 14. Id. at 5:19–20. The ’276 patent discloses that the polarity of the
power supplied to target 12 by the pulsed DC power supply 14 oscillates
between negative and positive potentials. Id. at 5:30–33. According to
the ’276 patent, the insulating layer on the surface of target 12 discharges
during the positive period, which prevents arcing. Id. at 5:33–35. The ’276
patent discloses that the pulsing frequency must exceed a critical frequency,
which depends on a target material, cathode current, and reverse time. Id.
at 5:35–37.
Reactor apparatus 10 further includes filter 15, which prevents RF
power supply 18 from coupling into pulsed DC power supply 14. Id.
at 5:50–51. According to the ’276 patent, filter 15 can be a 2 MHz band
rejection filter when a 2 MHz power supply is used for RF power supply 18.
Id. at 5:51–55. The ’276 patent discloses that “the band width of the
filter 15 can be approximately 100 kHz.” Id. at 5:55–57.
D. Illustrative Claim
Claims 1 and 6 of the ’276 patent are independent. Claim 1 is
representative and is reproduced below:
1. A reactor according to the present invention, comprising:
a target area for receiving a target;
a substrate area opposite the target area for receiving a
substrate;
a pulsed DC power supply coupled to the target area, the
pulsed DC power supply providing alternating negative and
positive voltages to the target;
an RF bias power supply coupled to the substrate; and
IPR2021-00105
Patent 7,544,276 B2

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a narrow band-rejection filter that rejects at a frequency of
the RE1 bias power supply coupled between the pulsed DC
power supply and the target area.
Ex. 1001, 22:40–50.
E. The Asserted Grounds of Unpatentability
Petitioner contends that claims 1–13 of the ’276 patent are
unpatentable on the following grounds. Pet. 13.
Reference(s) Basis Claim(s) Challenged
Licata,2 Kelly,3 Collins4 § 103 1–3, 6–8
Licata, Kelly, Collins, Aokura5 § 103 4, 5
Licata, Kelly, Collins, Dogheche6 § 103 9, 10
Licata, Kelly, Collins, Doessel7 § 103 11–13
In support of its unpatentability arguments, Petitioner relies on the
declaration of Dr. Vivek Subramanian. Ex. 1002 (“Subramanian
Declaration”). Patent Owner relies on the declaration of Dr. Alexander
Glew. Ex. 2002 (“Glew Declaration”).

1 This appears to be a typographical error that should read “RF” instead of
“RE.”
2 US 6,132,564 A, issued Oct. 17, 2000 (Ex. 1010).
3 P. J. Kelly et al., Reactive pulsed magnetron sputtering process for
alumina films, J. of Vacuum Sci. & Tech., A 18, 2890 (2000) (Ex. 1059).
4 US 6,077,384 A, issued June 20, 2000 (Ex. 1071).
5 JP H10102247 A, published Apr. 21, 1998 (Ex. 1068) ((English translation
(pp. 1–12); Verified Statement of Translation (p. 12); Japanese language
document (pp. 14–24).
6 E. Dogheche, Growth and optical characterization of aluminum nitride
thin films deposited on silicon by radio-frequency sputtering, Appl. Phys.
Lett. 74, 1209 (1999) (Ex. 1029).
7 US 5,527,605 A, issued June 18, 1996 (Ex. 1070).
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II. ANALYSIS
A. Discretion under 35 U.S.C. § 314(a) - Multiple Petitions
When evaluating whether to institute trial on more than one
concurrently-filed petition addressing the same patent, we are guided by our
Consolidated Trial Practice Guide, which states:
Based on the Board’s prior experience, one petition should be
sufficient to challenge the claims of a patent in most situations.
Two or more petitions filed against the same patent at or about
the same time . . . may place a substantial and unnecessary burden
on the Board and the patent owner and could raise fairness,
timing, and efficiency concerns. See U.S.C. § 316(b). . . .
Nonetheless, the Board recognizes that there may be
circumstances in which more than one petition may be necessary,
including, for example, when the patent owner has asserted a
large number of claims in litigation or when there is a dispute
about priority date requiring arguments under multiple prior art
references. In such cases two petitions by a petitioner may be
needed, although this should be rare.
CTPG 59.
Here, Petitioner filed two petitions on the same day, both challenging
claims 1–13 of the ’276 patent. In the present petition, Petitioner challenges
claims 1–13 on grounds based on Licata, Kelly, and Collins in combination
with a number of other references. Notice 1; Pet. 13. In the petition in
IPR2021-00103, Petitioner challenges claims 1–13 of the ’276 patent on
grounds based on Barber and Hirose in combination with other references.
IPR2021-00103, Paper 1, 3–5.
Petitioner argues that the Board should institute both petitions because
Patent Owner has asserted claims of the ’276 patent against real parties-in-
interest Intel and Samsung in separate district court litigations. Notice 1–2.
Petitioner asserts that by coordinating efforts with its real parties-in-interest,
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Patent 7,544,276 B2

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including Intel and Samsung, and presenting only two petitions challenging
the ’276 patent, this “minimiz[es] issues arising from these multiple parties
for the Board, despite the wealth of prior art against the ’276 patent’s broad
claims.” Id. at 2–3. Petitioner also argues that there are material differences
between the petitions that warrant institution of both petitions, and that the
Board has routinely instituted two parallel petitions under similar
circumstances. Id. at 3–5.
We are not persuaded that Petitioner’s arguments justify a second
petition challenging claims 1–13 of the ’276 patent.
First, we disagree with Petitioner’s argument that its coordinated
efforts with Samsung and Intel to present two petitions against the ’276
patent result in “minimizing issues from these multiple parties for the
Board.” Notice 2–3. Significantly, neither Samsung nor Intel are petitioners
in the present proceeding, and neither Samsung nor Intel have made any
representation that they will not file a petition challenging claims of the ’276
patent. At most, Petitioner asserts that “as of their filing, [the two petitions
filed by Petitioner] are the only challenges to the ’276 patent before the
Office.” Id. at 4. We decline to infer from Petitioner’s representations
whether Samsung or Intel will file, or will not file, other petitions
challenging the ’276 patent. As such, Petitioner has not shown that its
efforts minimize potential issues from multiple parties for the Board. We
further note that if another party chooses to file a petition challenging claims
of the ’276 patent, we would determine at that time whether to institute any
such petition. See Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-
00062, 00063, -00084, Paper 11, 2 (PTAB Apr. 2, 2019) (precedential)
(stating that “when different petitioners challenge the same patent, we
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Patent 7,544,276 B2

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consider any relationship between those petitioners when weighing the
General Plastic factors”); see also CTPG 56–58 (stating that the Board will
consider the General Plastic factors when determining whether to institute a
trial).
Second, we are not persuaded that material differences exist between
the claim analyses presented in this Petition and the petition filed in
IPR2021-00103. Petitioner argues that the IPR2021-00103 petition relies on
references not of record during prosecution, whereas the present Petition
relies on Kelly, which was of record during prosecution, although not
applied by the Examiner. Notice 3. Petitioner does not sufficiently explain
why Petitioner’s assertion of art (i.e., Kelly) that was before the Examiner in
its second-ranked petition is material or justifies the institution of a second
petition. See CTPG 60 (stating Petitioner should provide “a succinct
explanation of the differences between the petitions, why the issues
addressed by the differences are material, and why the Board should
exercise its discretion to institute additional petitions if it identifies one
petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a)”). For
example, Petitioner does not explain why, if the Board institutes the first-
ranked petition that asserts art that was not before the Examiner, the Board
should also institute a second petition that relies on art that was before the
Examiner. Therefore, Petitioner’s arguments are not persuasive.
We also disagree with Petitioner’s contention that the petitions present
different approaches to the claim limitations. Notice 3–4. Petitioner asserts
that the IPR2021-00103 petition presents grounds based on Barber, which
does not expressly disclose the filter claimed by the ’276 patent, whereas the
grounds of this proceeding include Licata, which describes “an RF filter
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Patent 7,544,276 B2

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between an RF power source and a pulse DC power source but does not
expressly disclose the bipolar aspects of the DC power source.” Id. at 3.
Petitioner also asserts that the IPR2021-00103 petition also relies on Hirose
to disclose the claimed filter, whereas this proceeding relies on Collins. Id.
In addition, Petitioner argues that “due to the nature of the challenged
claims, and the relevant prior art available, Petitioner had to separate the
grounds into separate petitions in order to ensure the different grounds
contained the necessary specificity.” Id. at 4.
Patent Owner responds that the two petitions use one or two base
references (i.e., Barber, or Barber and Belkind, in the IPR2021-00103
petition, and Licata and Kelly in this proceeding) for the claimed reactor and
either Hirose or Collins for the claimed filter. Notice Response 2–4. Patent
Owner argues that the Petitions start with the same base reactor system
without a filter, and then make the same design-choice argument that it
would have been obvious to add the claimed filter. Id. at 5.
Patent Owner’s arguments illustrate that there are more similarities
than material differences between the challenges set forth in the petitions.
Petitioner’s arguments highlight these similarities by stating that “Petition 1
relies on Hirose to disclose the claimed filter aspects, whereas Petition 2
relies on Collins.” Notice 3. Although the references relied on by the
petitions to disclose the claimed reactor system differ, the petitions present
similar scenarios in which base references are relied on for the reactor and
another reference is relied on to disclose the claimed filter. As such, we
disagree that Petitioner’s reliance on different art in each proceeding is a
reason to institute multiple proceedings.
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Patent 7,544,276 B2

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Petitioner has identified no special circumstances, such as the
examples provided in the Consolidated Trial Practice Guide, that would
justify a second inter partes review of the same patent. The ’276 patent
contains a relatively small number of claims (13 claims) (Ex. 1001, 22:40–
24:13), the claims themselves are not particularly long, and evaluating the
claims does not require analysis of a large number of limitations. Nor is
there an alternative potential claim construction that requires Petitioner to set
forth an alternative set of grounds, nor does there appear to be any dispute,
at this time, as to the priority date of the ’276 patent. See generally Pet.;
Prelim. Resp.
Finally, we disagree with Petitioner that the Board has routinely
instituted two parallel petitions under similar circumstances. Notice 4.
None of the proceedings identified by Petitioner present similar
circumstances to those presented here. The petitions before us do not
involve, for example, a possible antedating issue for a reference cited in the
challenges, as in IPR2019-00290 to -002938 or IPR2019-00237 to -00239.9
The petitions before us also do not involve, for example, challenges under
35 U.S.C. § 112 in the first petition and prior art challenges in the other
petitions, as in PGR2019-00037, PGR2019-00040, and PGR2019-00042.
We have determined that there are no material differences between the
analyses presented in the first and the second petitions, and that the first and
second petitions do not address claim limitations in different ways that could
cause different outcomes, distinguishing these cases from IPR2019-01223 to

8 The petitions in IPR2019-00291 and IPR2019-00293 were denied under
Section 314 as improper multiple petitions. IPR2019-00291, Paper 16, 8.
9 The petition in IPR2019-00238 was denied under Section 314 as an
improper multiple petition. IPR2019-00238, Paper 15, 8.
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Patent 7,544,276 B2

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-01227 and IPR2019-01464 and IPR2019-01465. Finally, IPR2019-00165
and IPR2019-00171 did not involve multiple petitions against the same
patent and inter partes review was instituted in only one of those
proceedings.
In view of the above, Petitioner has not adequately explained why the
Petition in this proceeding contains sufficient material differences in its
analysis to support instituting an additional inter partes review of the
challenged claims. We acknowledge Petitioner’s novel arguments,
including its “collaboration” argument and its “wealth of prior art”
argument, but are not persuaded that these are sufficient reasons to justify
instituting inter partes review on two parallel petitions, nor are we directed
to any persuasive authority indicating that the Board has adopted a practice
of doing so. Accordingly, because we institute an inter partes review of
claims 1–13 of the ’276 patent on the grounds presented in the IPR2021-
00103 petition, we exercise our discretion under § 314(a) to deny institution
in this proceeding.
III. CONCLUSION
For the reasons set forth above, we determine that the circumstances
weigh in favor of discretionary denial of this Petition. Accordingly, we
exercise our discretion to deny institution under 35 U.S.C. § 314(a).
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied and no trial is instituted.

IPR2021-00105
Patent 7,544,276 B2

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UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

APPLIED MATERIALS, INC.,
Petitioner,
v.
DEMARAY LLC,
Patent Owner.

IPR2021-00105
Patent 7,544,276 B2

Before CHRISTOPHER L. CRUMBLEY, KRISTINA M. KALAN, and
KIMBERLY McGRAW, Administrative Patent Judges.
CRUMBLEY, Administrative Patent Judge, concurring in the result.
I concur in result only.
IPR2021-00105
Patent 7,544,276 B2

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FOR PETITIONER:
Naveen Modi
Joseph E. Palys
PAUL HASTINGS LLP
naveenmodi@paulhastings.com
josephpalys@paulhastings.com
PH-Applied_Materials-DemarayIPR@paulhastings.com

FOR PATENT OWNER:
H. Annita Zhong
Benjamin Hattenbach
C. Maclain Wells
IRELL & MANELLA LLP
hzhong@irell.com
bhattenbach@irell.com
mwells@irell.com
DemarayIPRs@irell.com