Takeaway: Where patent owner does not object to the authenticity or admissibility of evidence submitted by petitioner, the Board may consider statements in the evidence in determining whether a reference was sufficiently accessible to the public to qualify as a prior art printed publication.

In its Final Written Decision, the Board determined that Petitioner showed by a preponderance of the evidence that claims 9, 14, 21, 26, 35, and 37 of U.S. Patent No. 7,811,421 are unpatentable. The ’421 patent relates to a method and apparatus for high-deposition sputtering of films on semiconductor substrates.

The Board began with claim construction, giving the claim terms in the ’421 patent their broadest reasonable construction in light of the specification of the ’421 patent. First, the Board maintained the constructions of “weakly-ionized plasma” and “strongly-ionized plasma” adopted in its Decision on Institution.

The Board then considered Patent Owner’s argument that the claims “require creation of the weakly-ionized plasma without an occurrence of arcing” based on the claims’ recitation of “creat[ing] a weakly-ionized plasma and then a strongly-ionized plasma without an occurrence of arcing.” The Board concluded that Patent Owner “improperly attempt[ed] to import extraneous limitations into the claim” and that its interpretation was “not consistent with the language of the claims, particularly when considered in view of the Specification.” In particular, the Board determined that the phrase in question modified “only the portion of the claim reciting the transition to a strongly-ionized plasma from a weakly-ionized plasma.” Accordingly, the Board “decline[d] to construe the claims to require creation of the weakly-ionized plasma without an occurrence of arcing.”

Next, the Board addressed “Patent Owner’s focus on the distinction between reducing and eliminating.” The Board stated that “Patent Owner does not explain adequately why one with ordinary skill in the plasma art would have interpreted the claim term ‘without developing an electrical breakdown condition,’ in light of the Specification, to require the transformation of the weakly-ionized plasma to a strongly-ionized plasma with a guarantee of eliminating all possibility of arcing.” Based on the Specification and testimony from Petitioner’s expert, the Board determined that the Specification “discloses only that the possibility of arcing is ‘substantially eliminated’ or ‘greatly reduced,’ and that it “would be unreasonable to exclude the disclosed embodiments, all of which stop short of such a guarantee.” Accordingly the Board “construe[d] the claim term ‘without developing an electrical breakdown condition in the chamber’ as ‘substantially eliminating the possibility of developing an electrical breakdown condition in the chamber.’”

The Board then considered the meaning of the term “creates” in the phrase “a voltage pulse . . . that creates a weakly-ionized plasma and then a strongly-ionized plasma from the weakly-ionized plasma.” Patent Owner argued that “the phrase ‘creates a weakly-ionized plasma’ should be interpreted as ‘ignites a gas from a state in which there is no plasma to a state in which a plasma exists, wherein the plasma is initially a weakly-ionized plasma.’” The Board noted that the Specification does not explicitly define the term “creates” and that it is used in various contexts within the Specification. The Board was not persuaded to adopt Patent Owner’s proposed construction and instead construed “creates” as “to bring into existence.”

Turning to the asserted grounds of unpatentability, the Board first examined whether claims 9, 21, and 35 are unpatentable as obvious over the combination of Wang and Kudryavtsev. Patent Owner contended that Wang does not disclose either (1) a “power supply that generates a voltage pulse between the anode and the cathode assembly that creates a weakly-ionized plasma and then a strongly-ionized plasma from the weakly-ionized plasma without an occurrence of arcing” and (2) “an amplitude, a duration [and/or] a rise time of the voltage pulse being chosen to increase a density of ions in the strongly-ionized plasma.” The Board was not persuaded by Patent Owner’s arguments, which relied in part on claim constructions that the Board rejected. In addition, the Board was persuaded that claims 1 and 17, which are apparatus claims, recite “an intended use that will not limit the scope of the claim, such that anticipation of the claims is based on whether the elements of that claim are disclosed , not on their intended use.”

The Board then considered whether claims 9, 21, and 35 (which depend from claims 1, 17, and 34) are unpatentable in view of the same references. Patent Owner did not provide separate arguments or otherwise address these dependent claims, and the Board was persuaded by Petitioner’s contentions and evidence that each of claims 9, 21, and 35 would have been obvious in view of Wang and Kudryavtsev. Next, the Board considered whether claims 14, 26, and 37 are unpatentable as obvious over the combination of Wang and Mozgrin Thesis. Patent Owner disputed “the prior art status of Mozgrin” but otherwise did not provide separate arguments beyond the arguments made with respect to the independent claims. The Board was persuaded that the cited combination teaches the additional limitations of claims 14, 26, and 37.

The Board then addressed whether the Mozgrin Thesis is available as prior art under 35 U.S.C. § 102(b) for purposes of its Final Written Decision. Petitioner asserted “that the Mozgrin Thesis is a doctoral thesis at Moscow Engineering Physics Institute, published in 1994, and, thus, it is prior art under § 102(b).” Petitioner supported its assertion with a copy of the catalog entry for the Mozgrin Thesis at the Russian State Library and a certified translation thereof. Petitioner also “allege[d] that the catalog entry ‘also shows that it is the routine business practice of the [Russian State Library] to index and catalog theses.” In addition, an article by Mozgrin that was published in 1995 “summarizes the research presented in the Mozgrin Thesis, and contains figures created from the photographs in the Mozgrin Thesis.” In response, Patent Owner argued that Petitioner failed to demonstrate that the Mozgrin Thesis is prior art under § 102. In particular, Patent Owner contended that Petitioner did not provide any evidence concerning “the actual date of cataloging of the Mozgrin Thesis” and that the thesis was “not sufficiently accessible to be considered a printed publication under § 102 because “the ‘document says nothing of when the [Moscow Engineering Physics] Institute (which is within the notoriously secretive former Soviet Union) decided to allow the public unrestricted access to this thesis.’” The Board was persuaded by Petitioner’s contentions and supporting evidence. The Board explained that “[a]lthough evidence establishing a specific date of cataloging and shelving before the critical date would have been desirable, it is not required in a public accessibility determination.” The Board further noted that the earliest possible critical date is in 2002, and “the catalog entry clearly shows a publication date of 1994.” The Board also noted that “Patent Owner had the opportunity, during this trial, to object to evidence and file a motion to exclude the evidence submitted by Petitioner” but Patent Owner did not object to the admissibility of the catalog entry or the Mozgrin Thesis. Patent Owner did not challenge the authenticity of the documents or allege that they “constitute inadmissible hearsay.” Accordingly , the Board concluded that “the information set forth in the catalog entry can be relied upon by Petitioner as evidence supporting contention that Mozgrin Thesis was cataloged in the Russian State Library, and that it was sufficiently accessible to the public before the critical date.” The Board also determined that Patent Owner did not “provide sufficient explanation or credible evidence to rebut the information disclosed in the Russian State Library’s catalog entry, including the 1994 publication date.” Based on the evidence before it, the Board “observe[d] that the Mozgrin Thesis was cataloged and indexed in a meaningful way, by the author’s name, the title of the thesis, . . . and the subject matter of the thesis.” Accordingly, the Board determined that it was sufficiently available to the public before the critical date and that Petitioner sufficiently established that the Mozgrin Thesis is a printed publication.

Judge Stephens dissented “from the Majority’s determination that the Mozgrin Thesis is prior art under 35 U.S.C. § 102(b).” He stated that “nothing in the catalog entry speaks to the date on which the Mozgrin Thesis was incorporated into the Russian State Library’s catalog of dissertations or shelved, or even that the Russian State Library catalog of dissertations existed at the time of invention” and that “neither the imprint date nor the labeling indicates the Mozgrin Thesis was publicly accessible prior to the critical date.” In addition, Judge Stephens noted that Petitioner had not “‘identified any evidence of the general practice’ of the Russian State Library with regard to catalog updates or shelving of received dissertations.” As summarized by Judge Stephens, “absent any evidence pertaining to when the Russian State Library received the Mozgrin Thesis, when the publicly accessible catalog was available, and what the general practices of the Russian State Library between receipt of a thesis and subsequent incorporation into a publicly accessible catalog are, the presumption the Mozgrin Thesis was publicly accessible more than one year prior to the date of the application for patent is pure speculation.” Judge Stephens also disagreed that “Patent Owner was required to object” to the evidence because Patent Owner does not contend that the Mozgrin Thesis is inadmissible under any Federal Rules of Evidence. Thus, Judge Stephens also dissented from the Majority’s determination that claims 14, 26, and 37 are unpatentable as obvious over the combination of Wang and the Mozgrin Thesis.

Fujitsu Semiconductor Ltd. v. Zond, LLC, IPR2014-00802
Paper 50: Final Written Decision
Dated: October 2, 2015
Patent: 7,811,421 B2
Before: Kevin F. Turner, Debra K. Stephens, Joni Y. Chang, susan L. C. Mitchell, and Jennifer Meyer Chagnon
Written by: Chagnon
Dissent-in-Part by: Stephens
Related Proceedings: IPR2014-00781, IPR2014-00782, IPR2014-00800, IPR2014-00805, IPR2014-01083, IPR2014-01086, and IPR2014-01087; seven unidentified district court cases (D. Mass.)