PTAB

IPR2012-00035

NisSan North AmERICa Inc v. Farzin DaVanloo

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1. Case Identification

2. Patent Overview

  • Title: Nanophase Diamond Films
  • Brief Description: The ’797 patent relates to amorphous or ultra-fine grained, diamond-like material films. The films are characterized as having nodules of carbon predominantly bonded in three-dimensional sp³ bonds, comprising less than 20% hydrogen, and having specific optical properties, including an imaginary index of refraction less than 0.5 at a light wavelength of about 632.8 nm.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 2, and 4 by Davanloo '90 595

  • Prior Art Relied Upon: Davanloo, F., et al., "Thin Film Diamond Produced by Pulse Laser Ablation" (1990) (“Davanloo '90 595”).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Davanloo '90 595, a publication by the patent's inventors that was not cited during prosecution, discloses every limitation of the challenged claims. The reference describes producing diamond thin films using a laser plasma discharge source, resulting in a "conglomerate of nanocrystalline diamonds" (nanophase film) with a high percentage of sp³ bonds. It also discloses particles of 100-200 Å (meeting the size limitations of claims 1 and 2), minimal or no hydrogen, and an imaginary index of refraction of ~0.3 at the claimed wavelength. The optical quality for Newton's rings was argued to be inherent in the described transparent films.
    • Motivation to Combine (for §103 alternative): Should the Board not find anticipation, Petitioner asserted the claims would be obvious. A person of ordinary skill in the art (POSITA) would look to other references from the same authors or in the same field to supply any missing element.
    • Expectation of Success (for §103 alternative): A POSITA would have an expectation of success due to the highly similar deposition techniques and resulting film properties described.

Ground 2: Anticipation of Claims 1, 2, and 4 by Aisenberg '89

  • Prior Art Relied Upon: Aisenberg, S., et al., "Ion Beam and Ion-Assisted Deposition of Diamond-Like Carbon Films" (1990) (“Aisenberg '89”).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Aisenberg '89, also not cited during prosecution, anticipates all challenged claims. The reference describes diamond-like carbon films with "significant extensive sp³ bonding" and the presence of "diamond crystallites in the 50-100 Angstrom range," meeting the nodule and size limitations. The films are described as "substantially hydrogen-free." The reference teaches the films are "highly transparent in the visible region," which would inherently result in an imaginary index of refraction less than 0.5 at 632.8 nm (a wavelength within the visible spectrum) and the capability of producing Newton's rings.
    • Motivation to Combine (for §103 alternative): The motivation to combine Aisenberg '89 with other art, if necessary, stemmed from a POSITA's desire to understand and optimize known methods for creating diamond-like films.
    • Expectation of Success (for §103 alternative): The clear disclosure of the key film properties in Aisenberg '89 would provide a POSITA with a high expectation of success.

Ground 3: Anticipation of Claims 1, 2, and 4 by Juengerman

  • Prior Art Relied Upon: Juengerman, E.M., "Characterization of Laser Plasma Deposited Amorphous Diamond Films, Doctoral Thesis" (Dec. 1990) (“Juengerman”).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that the Juengerman thesis, authored under the supervision of the ’797 patent inventors, discloses every claim limitation. It describes evaluating thin films from the "U.T. Dallas laser plasma discharge system," the same system central to the patent. The thesis identifies "hard grains" of 100-200 Å (nodules), films that are "essentially hydrogen free," and reports a measured imaginary index of 0.18 at the HeNe wavelength of 632.8 nm. It also explicitly mentions observing "uniform [optical] interference rings."
    • Motivation to Combine (for §103 alternative): A POSITA would be motivated to combine Juengerman with other references from the same research group to gain a complete picture of the state of the art.
    • Expectation of Success (for §103 alternative): Given that Juengerman details work from the inventors' own lab using the same equipment, a POSITA would have a very high expectation of achieving the claimed invention.

  • Additional Grounds: Petitioner asserted additional anticipation and obviousness challenges based on Spencer (a 1976 article), Strel'nitskii I and II (1978 articles), Miyazawa (a 1984 article), Davanloo '89 MRS, Kobashi (a 1988 article), and Collins '89 APL. These arguments largely relied on similar principles, arguing that these prior publications, many by the inventors or their close colleagues, described all the essential features of the claimed diamond-like films.

4. Key Claim Construction Positions

  • Petitioner relied on claim constructions from prior litigation (Gillette and Western Digital) where the term "bonded predominantly in three dimensional sp³ bonds" was construed to mean "approximately 95% or more of the bonds...are three dimensional sp³ bonds." Petitioner argued that the prior art met this construction.
  • The petition's core arguments also implicitly depend on construing the claims as not being limited to the specific deposition method detailed in the patent, allowing broader prior art deposition methods to be applied.

5. Key Technical Contentions (Beyond Claim Construction)

  • A central contention was that the ’797 patent is not entitled to its claimed priority date of October 22, 1990, from the parent '155 application.
  • Petitioner argued that the '155 application failed to provide adequate written description under §112 for key limitations that were added later in the '104 application (which issued as the ’797 patent). These limitations included:
    • Nodules with a diameter less than 500 Å (or 200 Å).
    • Nodules "bonded predominantly" (i.e., ~95%) with sp³ bonds.
    • An imaginary index of refraction measured specifically at a 632.8 nm wavelength.
  • This lack of priority entitlement was argued to make several key prior art references, including Davanloo '90 595, Aisenberg '89, and Juengerman, available as prior art against the challenged claims.

6. Arguments Regarding Discretionary Denial

  • Petitioner noted that while the ’797 patent had been asserted in the Eastern District of Texas and claim construction had occurred, "no court has ruled on invalidity based on prior art in response to a motion for summary judgment or in trial." This was presented to argue that an IPR would not be duplicative of prior court efforts and that the Board should review the patentability based on the newly presented prior art references, none of which were considered during the original prosecution.

7. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 2, and 4 of the ’797 patent as unpatentable under 35 U.S.C. §§ 102 and/or 103.