Boeing Co v. Laser SpallATION Technologies LLC

1. Case Identification

• Case #: IPR2024-00761
• Patent #: 7,487,684
• Filed: April 1, 2024
• Petitioner(s): The Boeing Company
• Patent Owner(s): The Regents of the University of California
• Challenged Claims: 1-24

2. Patent Overview

• Title: Method and System for Modifying Stress Waves for Thin Film Spallation
• Brief Description: The ’684 patent discloses a method and apparatus for measuring the adhesion strength of thin films on a substrate using laser spallation. The purported invention is the addition of a "glass element" behind the primary substrate, which modifies a laser-induced compressive stress wave into a "rarefaction shock" to more effectively separate (spall) the thin film from the substrate.

3. Grounds for Unpatentability

Ground 1: Anticipation over Wang-Dissertation - Claims 1-22 are anticipated by Wang-Dissertation under 35 U.S.C. §102.

• Prior Art Relied Upon: Wang-Dissertation (a 2002 Ph.D. Dissertation by Dr. Junlan Wang, titled “Thin-Film Adhesion Measurement by Laser-Induced Stress Waves”).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wang-Dissertation discloses every element of the challenged claims. Wang describes a laser spallation apparatus for testing thin-film adhesion that uses fused silica (a known glass) as a substrate material specifically because its properties are ideal for creating a "decompression shock," which Petitioner asserted is synonymous with the ’684 patent’s "rarefaction shock." Critically, Wang explicitly teaches "inserting an extra layer of the desired substrate material between the fused silica and the thin film" to test a variety of substrates. Petitioner contended this configuration directly reads on the ’684 patent’s claimed arrangement of a glass element, a separate substrate, and a coating, thereby anticipating the claims. Wang also disclosed ranges for coating thickness, glass thickness, and stress wave duration that fall within or overlap the ranges of various dependent claims.

Ground 2: Anticipation over Gupta-1992 - Claims 1-8, 10-19, and 21-22 are anticipated by Gupta-1992 under 35 U.S.C. §102.

• Prior Art Relied Upon: Gupta-1992 (a 1992 journal article titled “Measurement of Interface Strength by a Laser Spallation Technique”).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Gupta-1992 discloses an experimental laser spallation setup that is structurally identical to the apparatus claimed in the ’684 patent. Specifically, Figure 2(b) of Gupta-1992 depicts an apparatus comprising a fused quartz plate (the "glass element") bonded with glue to the back of a P-55 carbon ribbon (the "substrate"), which has a coating on its front surface. Petitioner argued that all structural limitations of independent claim 1 are explicitly present in this configuration. The functional limitation—modifying a stress wave to create a "rarefaction shock"—was argued to be an inherent property of using fused quartz in this known laser spallation setup. Because the structure is identical, Petitioner contended the inherent functional properties are necessarily present, and thus Gupta-1992 anticipates the claims.

Ground 3: Obviousness over Wang-Dissertation in view of Gupta-1992 - Claims 1-24 are obvious over Wang-Dissertation in view of Gupta-1992 under 35 U.S.C. §103.

• Prior Art Relied Upon: Wang-Dissertation and Gupta-1992.

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that to the extent Wang-Dissertation is found not to explicitly disclose placing a separate substrate between its fused silica element and the test film, the combination with Gupta-1992 renders this arrangement obvious. Wang taught the significant advantages of using fused silica to generate a "decompression shock" for improved thin-film testing. Gupta-1992 taught a well-known method for constructing laser spallation samples, including bonding a fused quartz plate to various substrates to test different interfaces.
  • Motivation to Combine: A POSITA, seeking to apply Wang’s advantageous fused silica technique to a wider variety of substrates, would combine Wang's teachings with the known sample preparation methods shown in Gupta-1992. Gupta-1992 provided the exact blueprint for bonding a fused quartz element to a different substrate material for testing.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because the combination involves applying a known material (Wang's fused silica) using a known technique (Gupta's sample construction) to achieve the predictable result of enhanced spallation testing on diverse substrates.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including grounds based on Wang-2002 in view of Gupta-1992, as well as arguments that certain dependent claims reciting numerical ranges are obvious over Wang-Dissertation or Gupta-1992 alone.

4. Key Technical Contentions (Beyond Claim Construction)

• "Decompression Shock" vs. "Rarefaction Shock": A central contention is that the term "decompression shock," as described in Wang-Dissertation and Wang-2002, is technically synonymous with the "rarefaction shock" claimed in the ’684 patent. Both terms describe a stress wave with a sharp, nearly instantaneous post-peak drop time, a known phenomenon in fused silica.
• Inherent Properties of Fused Quartz/Silica: Petitioner argued that the generation of a rarefaction/decompression shock is an inherent and well-known physical property that naturally results from propagating a laser-induced stress pulse through a glass element like fused quartz or fused silica. Therefore, prior art disclosing the physical structure inherently discloses this functional result.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv is inappropriate. The parallel district court case is in its earliest stages, with a pending motion to dismiss for lack of personal jurisdiction and only jurisdictional discovery authorized. Petitioner asserted there is no scheduled trial date, claim construction hearing, or expert discovery, and that the court has indicated the current complaint is likely to be dismissed. Therefore, factors of judicial economy and investment in the parallel proceeding weigh strongly against denying institution.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-24 of the ’684 patent as unpatentable.