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 relates to nanophase diamond films composed of nodules of predominantly sp³-bonded carbon. These films are characterized as being substantially hydrogen-free, having specific optical properties such as a low imaginary index of refraction, and being chemically bonded to a substrate.

3. Key Technical Contentions (Priority Date Challenge)

  • Petitioner dedicated a substantial portion of the petition to arguing that Patent 5,478,650 is not entitled to its claimed priority date of October 22, 1990, which derives from the ’155 application. The core contention was that the ’155 application fails the written description requirement of 35 U.S.C. §112 for multiple key limitations of the challenged claims.
  • Petitioner argued the ’155 application does not disclose:
    • Nodules with a diameter of "less than about 500 angstroms," instead disclosing clusters with dimensions "less than 1000 angstroms."
    • Nodules of carbon "bonded predominantly" in three-dimensional sp³ bonds (construed in litigation as ≥95% sp³), instead using the ambiguous term "a major amount" of sp³ bonds.
    • An imaginary index of refraction measured at a specific light wavelength of "about 632.8 nm," as the ’155 application allegedly recites no specific wavelength for this measurement.
  • This argument, if successful, would move the critical date for prior art purposes from 1990 to 1993, making several key references available as prior art.

4. Key Claim Construction Positions

  • The petition referenced prior claim constructions from related district court litigation involving the ’650 patent (Western Digital and Gillette).
  • A central term was "bonded predominantly in three dimensional sp³ bonds," which the court had construed to mean "clusters of carbon atoms of rounded or irregular shape wherein approximately 95% or more of the bonds between the carbon atoms in each cluster are three dimensional sp³ bonds."
  • Petitioner leveraged this construction to argue that the priority application’s disclosure of "a major amount" of sp³ bonds was insufficient to provide written description support for the claims, thereby invalidating the priority claim.

5. Grounds for Unpatentability

Ground 1: Claims 1, 2, and 4 are anticipated by Davanloo '90 595 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 Davanloo '90 595, which was not considered during prosecution, discloses every limitation of the challenged claims. The reference describes preparing diamond thin films using a laser plasma source, resulting in a "conglomerate of very fine grains of diamond polytype." Petitioner asserted this reference teaches nodules of 100-200 Å (well below the claimed 500 Å), a high percentage of sp³ bonds, minimal included hydrogen, and an imaginary index of refraction of approximately 0.3 at 632.8 nm. The chemical bonding was argued to be inherent from the described high-energy deposition process, which is substantively identical to that in the ’650 patent.
    • Motivation to Combine (for alternative §103 ground): If Davanloo '90 595 were found not to anticipate, Petitioner argued the claims are obvious over it. A POSITA would combine its teachings with other references from the same research group (e.g., Juengerman, Collins), who were all co-authors or members of the same laboratory, to arrive at the claimed invention.

Ground 2: Claims 1, 2, and 4 are anticipated by Miyazawa under §102.

  • Prior Art Relied Upon: Miyazawa, T., et al., Preparation and Structure of Carbon Film Deposited by a Mass-Separated C+ Ion Beam (1984) ("Miyazawa").
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued Miyazawa discloses diamond-like films deposited from a pure C+ ion beam, resulting in films with no detectable hydrogen. Miyazawa reports an imaginary index of refraction of 0 at a wavelength of 633 nm and shows a "featureless" TEM image. Petitioner contended that later analysis by the ’650 patent inventors themselves confirmed Miyazawa's films contained at least 90% sp³ bonding and had the claimed nodular structure, even if not visible in the TEM.
    • Motivation to Combine (for alternative §103 ground): If anticipation failed, a POSITA would be motivated to combine Miyazawa with other works in the field, particularly publications by the patent's own inventors who extensively studied and cited Miyazawa.
    • Key Aspects: A central part of this argument was that the ’650 patent's inventors repeatedly analyzed, cited, and relied on Miyazawa in their own scientific publications to validate their work but failed to disclose this highly relevant reference to the USPTO during prosecution.

Ground 3: Claims 1, 2, and 4 are anticipated by Spencer under §102.

  • Prior Art Relied Upon: Spencer, E.G., et al., Ion-beam-deposited polycrystalline diamondlike films (1976) ("Spencer").

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued Spencer, also not before the Examiner, discloses optically transparent, diamond-like carbon films created in a hydrogen-free environment. Spencer allegedly teaches grain sizes of 50-100 Å and predominantly sp³ bonding, based on recorded diffraction lines for diamond but not for graphite. The reference also describes the observation of "bright-colored interference rings," which Petitioner asserted meets the optical quality limitation. Chemical bonding to the substrate was argued to be inherent in the ion beam deposition process described.
    • Motivation to Combine (for alternative §103 ground): If considered non-anticipatory, Petitioner argued Spencer alone renders the claims obvious because it teaches all elements, or it would have been obvious to combine it with other known techniques for producing diamond-like films.

  • Additional Grounds: Petitioner asserted numerous additional anticipation and obviousness challenges against claims 1, 2, and 4. These were based on a wide array of publications, including Aisenberg '89, Juengerman (a thesis supervised by the inventors), Strel'nitskii I/II, Davanloo '89 MRS, Kobashi, and Collins '89 APL (the lead inventor's own paper). Each of these grounds relied on similar arguments that the respective reference taught the core features of a nanophase, sp³-bonded, hydrogen-free diamond film meeting all claim limitations.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 2, and 4 of Patent 5,478,650 as unpatentable under 35 U.S.C. §102 and/or §103.