PTAB

IPR2012-00035

Nissan North America Inc v. Farzin DaVanloo

Title: Nanophase Diamond Films
Brief Description: The ’797 patent relates to nanophase diamond films and methods for their production. The films are defined by specific structural and optical properties, including comprising nodules of carbon bonded predominantly in three-dimensional sp³ bonds, having a specified diameter, a low hydrogen content, and a low imaginary index of refraction at a particular light wavelength.

Prior Art Relied Upon: Davanloo '90 595 (a 1990 conference proceeding on electronic materials).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Davanloo '90 595, which was not considered during prosecution, discloses every limitation of the challenged claims. The reference describes producing diamond thin films using a laser plasma discharge technique nearly identical to that of the ’797 patent. Petitioner asserted Davanloo '90 595 discloses a film comprising a "conglomerate of very fine grains" with particles of 100-200 Å in size, satisfying the nodule diameter limitations of claims 1 (<500 Å) and 2 (<200 Å). The reference’s teaching of films with a "high percentage of sp³ bonds" and its description of the material as "diamondlike" allegedly meets the "bonded predominantly" limitation. Davanloo '90 595 also explicitly discloses hydrogen-free films and an imaginary index of refraction of approximately 0.3 at the claimed 632.8 nm wavelength. The optical quality for producing Newton's rings was argued to be an inherent property of the transparent films described.

Prior Art Relied Upon: Juengerman (a December 1990 doctoral thesis).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner contended that Juengerman, a thesis supervised by the inventors of the ’797 patent, describes films made using the same U.T. Dallas laser plasma discharge system. The thesis allegedly discloses all claimed features, including "hard grains" with sizes from 100-200 Å (meeting the nodule size limitations) that are sp³ bonded. The films are described as "essentially hydrogen free" (less than 0.01%), and Juengerman reports a measured imaginary index of refraction of 0.18 at the HeNe laser wavelength (632.8 nm). Critically, Juengerman explicitly discloses that the films "displayed uniform [optical] interference rings," which Petitioner asserted are the claimed "Newton's rings of interference."
- Key Aspects: The direct connection of this prior art to the patent’s inventors and their own deposition equipment forms a central part of this challenge.

Prior Art Relied Upon: Aisenberg '89 (a 1990 Materials Science Forum article).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Aisenberg '89 describes diamond-like carbon films produced by ion beam deposition that possess all the claimed characteristics. The reference teaches films with "significant extensive sp³ bonding" and containing "diamond crystallites in the 50-100 Angstrom range," satisfying the nodule and bonding limitations. The process is described as creating films that are "substantially hydrogen-free." Aisenberg '89 states the films are "highly transparent" and that "bright optical interference fringes were observed," which Petitioner argued inherently means the imaginary index of refraction is less than 0.5 and that the films possess the requisite optical quality for Newton's rings.
Additional Grounds: Petitioner asserted numerous additional single-reference anticipation challenges under §102 based on Spencer, Strel'nitskii I and II, Miyazawa, Davanloo '89 MRS, Kobashi, and Collins '89 APL. Each argument followed a similar pattern of mapping the reference's disclosure of diamond-like film properties (e.g., grain size, sp³ content, transparency, low hydrogen) to the specific limitations of claims 1, 2, and 4. In the alternative, Petitioner argued these references render the claims obvious under §103.

Petitioner relied on claim constructions adopted in prior district court litigation involving the ’797 patent.
The most critical construction cited was for the term "bonded predominantly in three dimensional sp³ bonds," which the courts construed to mean "approximately 95% or more of the bonds...are three dimensional sp³ bonds." Petitioner leveraged this high-percentage requirement to argue that prior art describing "diamond crystallites" or "diamond grains" necessarily met the limitation, as pure diamond consists of nearly 100% sp³ bonds.

A central contention of the petition was that the ’797 patent is not entitled to its claimed priority date of October 22, 1990, from the related ’155 application.
Petitioner argued that the ’155 application fails to provide adequate written description under 35 U.S.C. §112 for several key limitations added later in the ’104 application (which issued as the ’797 patent). Specifically, the ’155 application allegedly fails to disclose: (1) nodules with a diameter less than 500 or 200 angstroms; (2) nodules with 95% or more sp³ bonding; and (3) an imaginary index of refraction measured at the specific wavelength of 632.8 nm. This argument sought to establish an earlier effective filing date for numerous prior art references.

Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, and 4 of the ’797 patent as unpatentable.