PTAB

IPR2019-00369

ASM IP HOLDING B.V. v. Kokusai Electric Corp.

1. Case Identification

2. Patent Overview

  • Title: Substrate Processing Apparatus, Method of Controlling the Same, and Program
  • Brief Description: The ’396 patent describes a system for monitoring substrate processing equipment. The invention addresses the problem of signal indicators (like light towers and buzzers) alerting an operator to a condition without explaining why the alert was triggered, by providing a display unit that shows the specific "operation cause" for the signal's activation.

3. Grounds for Unpatentability

Ground 1: Claims 1-3 and 6-8 are obvious over Kang in view of Tencor, and further in view of Rusnica.

  • Prior Art Relied Upon: Kang (KR Publication 2003-0058863), Tencor (a 1996 product manual), and Rusnica (Patent 5,859,885).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kang discloses the foundational substrate processing apparatus, including signal indicators (a display member and buzzer) and a workstation for setting alarm conditions, but lacks a detailed user interface (UI). Tencor was argued to supply this missing element by disclosing a graphical "Tower UI" that allows an operator to define and display the behavior of a signal tower (lights and voice) for various "Profiler States" (i.e., operation conditions). However, the combination of Kang and Tencor did not explicitly teach displaying the active alarm cause with a distinct color. Petitioner asserted that Rusnica remedies this by teaching the use of multi-level color-coding for alarm messages on a display to help operators quickly understand system status, particularly for abnormal conditions.
    • Motivation to Combine: A POSITA would combine Kang and Tencor because Kang established the need for a user-configurable alarm system, and Tencor provided a known, graphically-driven, and user-friendly solution for that exact purpose. A POSITA would be further motivated to incorporate Rusnica's color-coding into the combined Kang/Tencor system to solve the known problem of operator confusion in complex manufacturing environments, thereby improving the assimilation of critical alarm information.
    • Expectation of Success: Petitioner asserted a POSITA would have a high expectation of success, as the combination involved implementing known UI features (from Tencor and Rusnica) into a standard processing system (from Kang) using conventional software programming techniques.

Ground 2: Claims 4 and 5 are obvious over Kang in view of Tencor, and further in view of Rusnica and Eryurek.

  • Prior Art Relied Upon: Kang (KR Publication 2003-0058863), Tencor (a 1996 product manual), Rusnica (Patent 5,859,885), and Eryurek (Patent 7,079,984).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon Ground 1 to address claim 4's limitation of a setting screen set by "independently inputting a logical formula and brackets in one frame." Petitioner argued that Tencor's graphical UI did not use textual logical formulas. Eryurek was introduced to teach a configuration screen for a process plant monitoring system that explicitly allows users to build alarm rules using textual IF/THEN expressions, Boolean operators (AND/OR), and brackets to group logical conditions.
    • Motivation to Combine: A POSITA would be motivated to add Eryurek's textual, logic-based interface to the Kang/Tencor system to provide a more powerful and flexible way to define complex alarm conditions, which the ’396 patent itself admits were known. It would also accommodate different user preferences, where some may prefer a graphical UI (Tencor) and others a more detailed textual UI (Eryurek).
    • Expectation of Success: Success would be predictable, as implementing a textual rule-based UI was a well-known technique in the art at the time, as demonstrated by Eryurek.

Ground 3: Claim 9 is obvious over Tencor.

  • Prior Art Relied Upon: Tencor (a 1996 product manual).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner challenged claim 9, which requires a display unit that "sets sound of the buzzer as the operation condition of the signal tower." Petitioner argued that while Tencor did not explicitly disclose this, it would have been an obvious modification. Tencor taught a UI for setting signal tower light behavior (e.g., color, flashing) based on various equipment states ("Profiler States").
    • Motivation to Combine: In a busy factory, an operator might silence an audible alarm (buzzer) while waiting for a technician. This could lead the technician to overlook the underlying condition because the audible alert is gone. A POSITA would be motivated to modify Tencor's UI to allow the status of the buzzer itself (e.g., "cleared" or "silenced") to be an input condition that triggers or escalates the visual signal tower light, ensuring the alarm's urgency remains visible even after being silenced.
    • Expectation of Success: The modification was a predictable design choice, extending Tencor's existing alarm-escalation logic to solve a common and practical problem in manufacturing environments.
  • Additional Grounds: Petitioner asserted an additional obviousness challenge for claim 10 over Kang in view of Tencor, arguing Tencor's UI teaches displaying all operation causes and highlighting the currently selected instruction with a different color.

4. Key Claim Construction Positions

  • "operation conditions" (Claim 1): Petitioner argued this term should be construed as "predetermined conditions for operating the signal indicators based on the running states of the apparatus." This construction distinguishes the pre-set rules from the current state of the machine and is critical for mapping prior art that discloses configuration screens where such rules are established in advance.
  • "operation causes" (Claim 1): As this term does not appear in the specification, Petitioner contended it should be construed to mean the "operation conditions" that are displayed on the UI. The related phrase "the operation cause which corresponds to the operation of the signal indicator" was argued to mean the specific, pre-set operation condition that was actually satisfied by a running state, thereby triggering the signal.
  • "wherein sound of the buzzer is recognized depending on a lighting state of the signal tower" (Claims 5-8): Petitioner argued the patent specification does not describe this causal relationship but instead discloses the opposite (a light state depending on a buzzer sound). Therefore, for the claim to have written description support, Petitioner asserted it must be construed broadly to mean the buzzer sound is simply "associated with" a lighting state.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-10 of Patent 7,808,396 as unpatentable.