PTAB

IPR2012-00037

Nissan North America Inc v. Farzin DaVanloo

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1. Case Identification

2. Patent Overview

  • Title: Nanophase Diamond Films
  • Brief Description: The ’650 patent describes a nanophase diamond film for use as a coating. The film is characterized by comprising nodules of carbon bonded predominantly in three-dimensional sp³ bonds, having a low hydrogen content, a specific optical transparency (imaginary index of refraction < 0.5 at ~632.8 nm), and nodules with a diameter less than 500 angstroms.

3. Grounds for Unpatentability

Ground 1: Anticipation over Davanloo '90 595 - Claims 1, 2, and 4 are anticipated under 35 U.S.C. § 102

  • 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, which was not considered during prosecution, discloses every limitation of the challenged claims. It describes a laser plasma process to create diamond thin films identified as a "conglomerate of very fine grains" with a high percentage of sp³ bonds. Petitioner asserted this reference teaches films with minimal hydrogen, an imaginary index of refraction of approximately 0.3 at the claimed wavelength, and a particle size of 100-200 angstroms, meeting the claim limitations. The reference's similar deposition technique (laser ablation) was argued to inherently result in chemical bonding to the substrate and the optical quality necessary to produce Newton's rings of interference.
    • Motivation to Combine (for §103 alternative): In the alternative, Petitioner argued the claims are obvious over Davanloo '90 595. A person of ordinary skill in the art (POSITA) would combine this reference with others from the same laboratory group (including Juengerman and Collins, the named inventors) or references cited therein to arrive at the claimed invention.

Ground 2: Anticipation over Aisenberg '89 - Claims 1, 2, and 4 are anticipated under §102

  • 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 considered by the examiner, anticipates the claims. The reference discloses diamond-like carbon (DLC) films with "significant extensive sp³ bonding" and the presence of "diamond crystallites in the 50-100 Angstrom range." It explicitly teaches that these DLC films can be "substantially hydrogen-free." Petitioner argued that the described optical transparency inherently meets the claimed imaginary index of refraction, and that the disclosed high-energy ion beam deposition process inherently results in chemical bonding with the substrate and produces interference fringes (Newton's rings).
    • Motivation to Combine (for §103 alternative): If not anticipating, Petitioner argued a POSITA would have found it obvious to combine Aisenberg '89 with other references from the same field or by the same authors to achieve the claimed film properties.

Ground 3: Anticipation over Juengerman - Claims 1, 2, and 4 are anticipated under §102

  • 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 asserted that the Juengerman thesis, which was supervised by the inventors of the ’650 patent and describes work on the same deposition system, anticipates all challenged claims. Juengerman discloses films with nanometer-scale "hard grains" (100-200 angstroms) of sp³ bonded carbon that are "essentially hydrogen free." The thesis explicitly reports an imaginary index of refraction of 0.18 at the 632.8 nm wavelength and the direct observation of "uniform [optical] interference rings" on silicon wafers, satisfying the Newton's rings limitation.
    • Motivation to Combine (for §103 alternative): As an alternative, Petitioner argued for obviousness, noting that a POSITA would readily look to the doctoral thesis of a student working directly with the inventors on the same technology for further details and predictable results.

  • Additional Grounds: Petitioner asserted additional anticipation and obviousness challenges against claims 1, 2, and 4 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 grounds relied on similar arguments that various deposition methods for DLC films inherently produced the claimed structural and optical properties.

4. Key Technical Contentions (Beyond Claim Construction)

  • Invalid Priority Claim: A central contention of the petition is that the ’650 patent is not entitled to its claimed priority date of October 22, 1990, from the ’155 application. Petitioner argued the ’155 application lacks adequate written description for several key limitations that were added in a later application. Specifically, the priority application allegedly fails to disclose:
    • Nodules with a diameter "less than about 500 angstroms" (disclosing instead "less than 1000 angstroms").
    • Nodules "bonded predominantly" in sp³ bonds, which was construed in litigation to mean approximately 95% or more sp³ bonding (disclosing instead the ambiguous term "a major amount").
    • An imaginary index of refraction measured at a specific wavelength of "about 632.8 nm" (disclosing no specific wavelength).
  • Impact on Prior Art: By invalidating the priority claim, Petitioner argued the patent's critical date should be April 1, 1993, which would make references like Davanloo '90 595, Aisenberg '89, and Juengerman available as prior art under §102.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, and 4 of the ’650 patent as unpatentable under 35 U.S.C. §§ 102 and/or 103.