Samsung Electronics Co Ltd v. Demaray LLC

1. Case Identification

• Case #: IPR2021-01090
• Patent #: 7,544,276
• Filed: June 11, 2021
• Petitioner(s): Samsung Electronics Co., Ltd.
• Patent Owner(s): Demaray LLC
• Challenged Claims: 1-13

2. Patent Overview

• Title: Reactor and Method for Sputtering
• Brief Description: The ’276 patent discloses a plasma reactor for sputtering deposition of thin films. The system uses a pulsed DC power supply coupled to a sputtering target and an RF power supply coupled to a substrate, with a narrow band-rejection filter placed between the DC supply and the target to prevent RF interference.

3. Grounds for Unpatentability

Ground 1: Obviousness over Barber and Hirose - Claims 1-3 and 6-8 are obvious over Barber in view of Hirose.

• Prior Art Relied Upon: Barber (Patent 6,342,134) and Hirose (Patent 6,485,602).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Barber taught all elements of independent claims 1 and 6 except for the "narrow band-rejection filter." Barber disclosed a reactive sputtering reactor with a target, a substrate, a pulsed DC power supply coupled to the target, and an RF power supply coupled to the substrate to apply a bias. Barber’s stated goal was to achieve stable waveforms and optimize deposition conditions.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would have understood that using two power supplies (DC and RF) in the same plasma chamber, as in Barber, could cause interference. Hirose disclosed using band-rejection filters in a plasma processing apparatus specifically to isolate two different-frequency power supplies and prevent such interference. A POSITA would combine Hirose’s filter with Barber’s system to achieve Barber’s goal of a stable DC waveform by protecting the DC power supply from the RF bias, a predictable solution to a known problem. Petitioner noted that this was a well-known practice, even recommended by power supply manufacturers at the time.
  • Expectation of Success: A POSITA would have had a high expectation of success, as combining a known filter type to prevent interference between standard power supplies in a plasma system was a routine design choice with predictable results.

Ground 2: Obviousness over Barber, Hirose, and Aokura - Claims 4 and 5 are obvious over Barber in view of Hirose and Aokura.

• Prior Art Relied Upon: Barber (’134 patent), Hirose (’602 patent), and Aokura (Japanese Patent Publication No. JPH10102247A).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that the base combination of Barber and Hirose rendered most claim elements obvious, as detailed in Ground 1. Claims 4 and 5 add limitations requiring the magnet to scan across the target in a first direction while extending perpendicularly in a second direction, including beyond the target's edge. While Barber taught a rotating magnet for uniform erosion, it did not teach this specific scanning pattern.
  • Motivation to Combine: Aokura taught a magnetron sputtering apparatus that used the exact scanning mechanism recited in the claims. Aokura explained that this method provides more uniform target erosion and increases target utilization efficiency. A POSITA would have been motivated to modify the Barber/Hirose system with Aokura’s improved magnet scanning technique to achieve the predictable benefits of more uniform film deposition and longer target life, which were well-known goals in the sputtering arts.
  • Expectation of Success: Implementing a known magnet scanning technique from Aokura into the Barber/Hirose sputtering system would have been straightforward for a POSITA, with a reasonable expectation of achieving the desired improvement in erosion uniformity.

Ground 3: Obviousness over Barber, Hirose, and Dogheche - Claims 9 and 10 are obvious over Barber in view of Hirose and Dogheche.

• Prior Art Relied Upon: Barber (’134 patent), Hirose (’602 patent), and Dogheche (a 1999 Applied Physics Letters article).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the Barber/Hirose combination. Claim 9 added the limitation of a "ceramic target," and claim 10 added a "temperature controller for holding the temperature of the substrate substantially constant." Barber taught metallic targets (e.g., aluminum, silicon) but not ceramic ones. Dogheche disclosed reactive sputtering of a high-quality aluminum nitride (AlN) film using a ceramic AlN target. Dogheche further taught that maintaining the substrate temperature at 400°C was critical to obtaining the best film texture.
  • Motivation to Combine: A POSITA would have been motivated to substitute the metallic target in the Barber/Hirose system with Dogheche’s ceramic target to expand the system's capabilities to deposit different types of useful films, such as high-quality AlN. To achieve the best results as taught by Dogheche, the POSITA would have also incorporated a temperature controller to maintain a constant substrate temperature. This modification would have been a logical step to optimize the process for the new target material, consistent with Barber's overall goal of depositing high-quality films.
  • Expectation of Success: Using ceramic targets and controlling substrate temperature were known techniques in the art. A POSITA would have had the skill and knowledge to integrate these features from Dogheche into the Barber/Hirose system with a reasonable expectation of successfully depositing high-quality ceramic films.

• Additional Grounds: Petitioner asserted numerous other obviousness challenges. These included substituting the metallic target of Barber with a ceramic target from Yamazaki (Ground 3), an alloyed target from Sproul (Ground 5), a silicon-aluminum alloy target from Laird (Ground 6), or an aluminum-silicon alloy target containing rare-earth ions from Segal (Ground 7). Furthermore, Grounds 8-14 re-asserted each of the prior combinations in view of Belkind (a 2000 article) to the extent Barber was found not to explicitly teach a pulsed DC power supply providing alternating positive and negative voltages.

4. Arguments Regarding Discretionary Denial

• §325(d) (Same or Substantially Same Art): Petitioner argued against discretionary denial under §325(d), contending that while the Belkind reference was before the examiner in an Information Disclosure Statement (IDS), it was never substantively relied upon to reject the claims or distinguished by the applicant. Petitioner asserted the Office never considered Belkind in the context of the specific combinations and arguments presented in the petition, which are supported by expert testimony.
• §314(a) (Fintiv Factors): Petitioner argued that the Fintiv factors strongly favored institution. It contended that the parallel district court litigations were in their infancy, with no trial date set and minimal investment by the parties or the court. Petitioner also asserted that there was not a complete overlap between the invalidity grounds in the IPR and the district court case, and that its coordinated diligence in filing warranted review.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-13 of Patent 7,544,276 as unpatentable.