throbber
Patent No. 7,128,988
`Petition For Inter Partes Review
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TDK Corporation,
`Petitioner,
`
`v.
`
`Lambeth Magnetic Structures, LLC,
`Patent Owner
`
`Patent No. 7,128,988
`Issue Date: October 31, 2006
`Title: MAGNETIC MATERIAL STRUCTURES,
`DEVICES AND METHODS
`_______________
`
`Inter Partes Review No._____
`_______________
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 et seq.
`
`
`
`
`dc-803629
`
`

`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`NOTICES AND STATEMENTS ................................................................ 1 
`A.
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ........................... 1 
`B.
`Related Matters Under 37 C.F.R. § 42.8(b)(2) .................................... 1 
`C.
`Lead and Back-up Counsel Under 37 C.F.R. § 42.8(b)(3) .................. 2 
`D.
`Service Information Under 37 C.F.R. § 42.8(b)(4) .............................. 2 
`II. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A) ............... 2 
`III.
`INTRODUCTION ........................................................................................ 3 
`IV. THE ’988 PATENT ...................................................................................... 3 
`A. Overview .............................................................................................. 3 
`B.
`Background .......................................................................................... 4 
`C.
`’988 Patent Prosecution History ......................................................... 10 
`V. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) ............. 11 
`VI. DETAILED EXPLANATION OF GROUNDS FOR
`INVALIDITY .............................................................................................. 15 
`A. Ground 1: Shen in View of Dill Renders Claims 1 and 27
`Obvious .............................................................................................. 16 
`B. Ground 2: Dill in View of Shen Renders Claims 1, 3, 6-11, 13,
`14, 17-19, 22, 24, 27-30, 34, and 38 Obvious .................................... 25 
`C. Ground 3: Dill in View of Shen and Heim Renders Claims 12,
`15, 16, 21, and 23 Obvious ................................................................. 43 
`D. Ground 4: Dill in View of Shen and Lambeth I Renders
`Claims 2, 25, 26, and 31 Obvious ...................................................... 52 
`Ground 5: Dill in View of Shen and Noguchi Renders
`Claim 39 Obvious ............................................................................... 57 
`VII. CONCLUSION ........................................................................................... 60 
`
`
`E.
`
`dc-803629
`
`i
`
`

`
`Docket No.: 357040000034
`
`
`EXHIBIT LIST FOR INTER PARTES REVIEW OF
`
`U.S. PATENT NO. 7,128,988
`
`Exhibit Description
`U.S. Patent No. 7,128,988 (“the ’988 patent”)
`U.S. Application No. 10/415,757 (“the ’757 application”)
`U.S. Patent No. 6,248,416 (“Lambeth ’416”)
`Amendment dated March 17, 2006
`Notice of Allowance dated July 28, 2006
`Declaration of Dr. Robert Sinclair
`X. Wang and A.M. Taratorin (1999), Magnetic Information Storage
`Technology: A Volume in the ELECTROMAGNETISM Series 1st
`Edition. London: Academic Press. (“Wang”)
`S.Y. Chu, A. Cramb, M. De Graef, D. Laughlin, and M.E.
`McHenry, “The effect of field cooling and field orientation on the
`martensitic phase transformation in a Ni2MnGa single crystal,” J.
`Appl. Phys. 87(9) (2000) 5777-5779. (“Chu”)
`U.S. Patent No. 6,023,395 (“Dill”)
`E. Bauer, “Growth of Thin Films,” J. Phys.: Condens. Matter 11
`(1999) 9365–9385. (“Bauer”)
`J. Shen, M. Klaua, P. Ohresser, H. Jenniches, J. Barthel, Ch. V.
`Mohan, J. Kirschner, “Structural and magnetic phase transitions
`of Fe on stepped Cu (111),” Phys. Rev. B 56, 17, 134-143 (1997)
`(“Shen”)
`U.S. Patent No. 5,465,185 (“Heim”)
`D.N. Lambeth, W. Yang, H. Gong, D. E. Laughlin, B. Lu, L.L. Lee,
`J. Zou, P.S. Harllee, “Magnetic Media Performance: Control
`Methods for Crystalline Texture and Orientation,” Mat. Res. Soc.
`Symp. Proc. Vol. 517, 181-192 (1998) (“Lambeth I”)
`U.S. Patent No. 5,862,022 (“Noguchi”)
`
`Exhibit #
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`
`1008
`
`1009
`1010
`
`1011
`
`1012
`1013
`
`1014
`
`dc-803629
`
`ii
`
`

`
`
`
`
`Docket No.: 357040000034
`
`TDK Corporation (“Petitioner” or “TDK”) petitions for inter partes review
`
`in accordance with 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 et seq. of
`
`claims 1-3, 6-19, 21-31, 34, 38, and 39 of U.S. Patent No. 7,128,988 (“the
`
`’988 patent” (Ex. 1001)). The ’988 patent issued on October 31, 2006, and is
`
`assigned to Lambeth Magnetic Structures, LLC (“Patent Owner” or “Lambeth”).
`
`I.
`
`NOTICES AND STATEMENTS
`
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`
`Toshiba Corporation, Toshiba America Information Systems, Inc., Toshiba
`
`America Electronic Components, Inc., and Toshiba of Canada, Ltd. (collectively
`
`“Toshiba”), Headway Technologies, Inc., SAE Magnetics (H.K.) Ltd., TDK
`
`Philippines Corporation, and Petitioner TDK are the real parties-in-interest.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`Lambeth is currently alleging infringement by Toshiba of claims 1, 3, 6, 8,
`
`11, 12, 17, 19, 23, 27, 28, and 29 of the ’988 patent in the U.S. District Court for
`
`the Western District of Pennsylvania. See Lambeth Magnetic Structures, LLC v.
`
`Toshiba Corp., Civil Action No. 2:14-cv-01526-CB (W.D. Pa.). To date, the
`
`’988 patent has not been the subject of any inter partes review or reexamination
`
`proceeding. The ’988 patent issued from US Application Serial No. 10/415,757,
`
`which was a national
`
`stage application of
`
`International Application
`
`
`
`

`
`Docket No.: 357040000034
`
`No. PCT/US02/27327 filed on August 29, 2002. PCT/US02/27327 claims priority
`
`to US Provisional Application Serial No. 60/315,920 filed on August 29, 2001.
`
`C. Lead and Back-up Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner identifies the following
`
`counsel (and a power of attorney accompanies this Petition):
`
`Lead Counsel
`Hector Gallegos
`hgallegos@mofo.com
`Registration No.: 40,614
`MORRISON & FOERSTER LLP
`2000 Pennsylvania Avenue, NW
`Suite 6000
`Washington, D.C. 20006-1888
`Tel.: (202) 887-6920
`Fax: (202) 887-0763
`
`
`D.
`
`Back-up Counsel
`Jonathan Bockman
`jbockman@mofo.com
`Registration No.: 45,640
`MORRISON & FOERSTER LLP
`1650 Tysons Boulevard, Suite 400
`McLean, VA 22102-4220
`Tel.: (703) 760-7769
`Fax: (703) 760-7777
`
`Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`Service information for lead and back-up counsel is provided above.
`
`Petitioner accepts service at: 35704-988-IPR@mofo.com.
`
`II. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A)
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the ’988 patent is
`
`available for inter partes review and that Petitioner is not barred or estopped from
`
`requesting an inter partes review challenging the patent claims on the grounds
`
`identified in this Petition.
`
`dc-803629
`
`2
`
`

`
`Docket No.: 357040000034
`
`
`III.
`
`INTRODUCTION
`
`The ’988 patent is directed to improving the magnetic properties in magnetic
`
`films and related devices by using a template to achieve a desired atomic structure
`
`for a magnetic film layer. The ’988 patent states that this desired film structure is
`
`novel. However, both the structure of the magnetic film layer and the method of
`
`achieving this film structure were described in publications before the effective
`
`filing date of the ’988 patent.
`
`The references presented herein establish that prior to the effective filing
`
`date of the ’988 patent, the challenged claims would have been obvious to those of
`
`ordinary skill in the art. Section IV of this Petition summarizes the ’988 patent and
`
`its technological background. Section V addresses certain claim construction
`
`issues. Section VI sets forth the detailed grounds for invalidity of claims 1-3, 6-19,
`
`21-31, 34, 38, and 39. This showing is accompanied by the Declaration of
`
`Dr. Robert Sinclair (“Sinclair Decl.” (Ex. 1006)). Accordingly, Petitioner
`
`respectfully requests a Decision to institute inter partes review.
`
`IV. THE ’988 PATENT
`
`A. Overview
`The ’988 patent issued from the national stage of International Patent
`
`Application No. PCT/US02/27327, which was filed on August 29, 2002, and
`
`designated the U.S. for national stage entry. PCT/US02/27327 claims priority to
`
`dc-803629
`
`3
`
`

`
`Docket No.: 357040000034
`
`U.S. Provisional Application No. 60/315,920, which was filed on August 29, 2001.
`
`Under 35 U.S.C. § 371(c), the ’988 patent is entitled to the August 29, 2001, filing
`
`date of Provisional Application No. 60/315,920.
`
`B.
`
`Background
`
`In order to introduce the ’988 patent in its proper context, the first part of
`
`this section presents an overview of magnetic thin film technology. After that
`
`overview, this section addresses the specific disclosure of the ’988 patent.
`
`Overview of Relevant Magnetic Film Technology
`
`Magnetic films are used in many devices. For example, sensors for
`
`detecting magnetic field strength and magnetic read/write heads for writing to
`
`magnetic storage media typically include components formed of stacks of thin
`
`magnetic films. (Ex. 1006, ¶ 32.) The magnetic properties of these films can be
`
`carefully controlled by controlling film deposition processes. (Id., ¶¶ 32, 40-41.)
`
`Doing so effectively, however, requires an understanding of the structure/property
`
`relationships in these materials. (Id., ¶ 32.) The ’988 patent purportedly discloses
`
`improved structural/property relationships.
`
`“Magnetic materials” retain their own, internal magnetic fields having a
`
`“magnetization” or “magnetization direction.” (Id.) The strength and direction of
`
`a material’s magnetization is dictated, in part, by its crystal structure. (Id., ¶ 33.)
`
`dc-803629
`
`4
`
`

`
`Docket No.: 357040000034
`
`Thin films tend to form “natural structure” in their default, unless they are
`
`grown on a “template” that encourages them to form another structure. (Id.,
`
`¶¶ 35-36, 43.) The most common magnetic material, iron (Fe), for example, has a
`
`body centered cubic (bcc) natural structure. (Id.) Face centered cubic (fcc) is a
`
`common natural structure of magnetic materials that contain nickel (Ni). (Id.)
`
`However, both materials can be made to form thin films with other structures using
`
`appropriate templates. (Id.) Templates are often specified by their surface
`
`structure and symmetry, which can dictate the structure of the films formed on top
`
`of them. One common example is the (111) hexagonal template which has a
`
`“close packed,” or especially dense, surface structure known for many decades to
`
`be advantageous for growing magnetic films. (Id., ¶¶ 42-43.)
`
`Because magnetic properties are dictated in part by film structure, templates
`
`can be used to manipulate magnetic properties. Doing so was well known in the
`
`art in 2001. (Ex. 1001, 9:15-11:27; see, e.g., FIG. 3.) Templates can be used, for
`
`example, to grow films including multiple “variants” which have the same crystal
`
`structure, but possess different orientations. (Ex. 1006, ¶¶ 35-36.) Each variant
`
`has a different preferred magnetization direction. (Id., ¶ 37.)
`
`“Magnetic anisotropy” is a material’s overall preference for a particular
`
`magnetization direction. (Id., ¶ 33.) A more anisotropic material will have a
`
`greater preference. (Id.) “Uniaxial anisotropy” is a severe form of anisotropy
`
`dc-803629
`
`5
`
`

`
`Docket No.: 357040000034
`
`represented by a preference for a single axis called the “easy magnetization axis.”
`
`(Id.) Anisotropy was known prior to August 2001 to be beneficial for magnetic
`
`recording devices. (Id.; see also Ex. 1007, pp. 81-171.) This is because anisotropy
`
`hinders reversal or changes in magnetization upon exposure to a magnetic field.
`
`(Ex. 1006, ¶ 33.) All of this was well known years before the August 2001
`
`effective filing date of the ’988 patent. (Id.)
`
`It was also well known prior to August 2001 that multiple variants generally
`
`decrease anisotropy. (Id., ¶¶ 36-37.) This is because the overall magnetization
`
`direction of the film is the sum of the magnetization of its variants, and different
`
`variants can oppose one another. (Id.) Moreover, multiple variants tend to form in
`
`equal proportions. (Id.; see also Ex. 1001, 16:32-36.)
`
`The ’988 patent refers to this tendency of variants to form in equal
`
`proportions as “symmetry.” (Ex. 1001, 16:32-36.) A “symmetry broken” film
`
`having unequal amounts of variants generally has greater anisotropy. (Id.)
`
`Therefore, increasing the volume fraction of certain variants at the expense of
`
`others increases anisotropy. (See, e.g., Ex. 1008, p. 5777 (enhancing anisotropy by
`
`“nucleating favorable variants or increasing the volume fraction of the favorable
`
`variants”).) This was understood before August 2001. (Ex. 1006, ¶ 37.)
`
`dc-803629
`
`6
`
`

`
`Docket No.: 357040000034
`
`
`The Disclosure of the ’988 Patent
`
`The ’988 patent is directed to an allegedly novel film structure that achieves
`
`high magnetization and anisotropy through symmetry breaking. Improving
`
`anisotropy in magnetic writing devices improves reliability by preventing
`
`uncontrolled changes in head magnetization. (Id., ¶ 33.) The ’988 patent asserts
`
`that “the invention of orientation control of bcc and bcc derivative materials [in
`
`this structure] allows new devices . . . [with] good orientation, high magnetization,
`
`high permeability and low losses.” (Ex. 1001, 13:4-8.)
`
`The claims are directed to a “bcc-d” magnetic layer, which is a magnetic
`
`film naturally having (bcc) or related structure (Id., 14:65-67.) The layer is formed
`
`on the surface of a template that directs the layer’s growth to form a uniaxial,
`
`broken symmetry structure. (Id.) The entire layer stack is disposed on top of a
`
`substrate. (Id.) Claim 1 broadly claims these three basic components of a
`
`magnetic layer stack formed using a template as follows:
`
`1. A magnetic material structure comprising:
`a substrate [1a];
`at least one bcc-d layer [1b] which is magnetic, forming a
`uniaxial [1c] symmetry broken structure [1d]; and
`at least one layer providing a (111) textured hexagonal
`atomic template [1e] disposed between said substrate and
`said bcc-d layer [1f].
`
`(Id., claim 1.)
`
`dc-803629
`
`7
`
`

`
`Docket No.: 357040000034
`
`The claimed “substrate” [1a] provides structure support for the other layers
`
`in the film stack. The claimed “bcc-d layer” [1b] is a magnetic film naturally
`
`having a body-centered cubic crystal (bcc) or a structure derived from (bcc). (Id.,
`
`14:65-67.) The bcc-d layer is “uniaxial” [1c], meaning that it has a single easy
`
`magnetization axis aligned in a particular direction. (See Section V, infra.) The
`
`claimed “(111) textured hexagonal atomic template” [1e] is located between the
`
`substrate and the bcc-d layer [1f]. The patent gives examples of the (111) textured
`
`hexagonal atomic template [1e]: (a) the (111) surface of a face centered cubic (fcc)
`
`and (b) the (0002) surface of hexagonal closed packed (hcp) structured material.
`
`(Ex. 1001, 14:55-57; see also Ex. 1006, ¶ 30.)
`
`The ’988 patent claims that the “bcc-d” layer [1b] has a “symmetry broken
`
`structure” [1d]. The specification indicates that a “symmetry broken” material
`
`exists when a full three or six crystallographic variant set does not contain equal
`
`amounts of each of the variants. (See, e.g., Ex. 1001, 23:38-41; see also id.,
`
`16:34-36 (“symmetry broken” structure exists in the three variant system of FIG. 3
`
`“[w]hen the volumes of the three variants are not equal”).) The specification
`
`explains symmetry breaking in terms of “controlling the epitaxial growth
`
`conditions” of the “bcc-d” overlayer [1b] on the template [1e] to select a “very
`
`special exchange coupled subset” of “a new set of six crystalline variants with
`
`special orientational relationships.” (Id., 14:48-55.) This is the only method of
`
`dc-803629
`
`8
`
`

`
`Docket No.: 357040000034
`
`creating a “symmetry broken uniaxial” [1c-d] film disclosed in the ’988 patent.
`
`Claim 1 of the ’988 patent claims the stack represented in Schematic A as follows:
`
`To other layers
`
`. . .
`
`[1b] magnetic bcc-d layer: (110)(bcc)
`[1e] (111) textured hexagonal template: (111)(fcc) or (0002)(hcp)
`To substrate [1a] and other layers
`
`. . .
`
`(Schematic A: Structure in claim 1 of the ’988 Patent.) (Ex. 1006, ¶ 30.)
`
`
`
`
`
`This layer stack was not new in August 2001 and had already been
`
`incorporated into magnetic devices. (Ex. 1009, 8:35-47; FIG. 4A.) Moreover,
`
`(111)(fcc) surfaces [1e] have been used for decades as a template layer for growing
`
`magnetic films. (See, e.g., Ex. 1010, p. 9375 (“The literature of the growth of
`
`ferromagnetic metals on fcc(111) surfaces is extensive so that only a few examples
`
`can be discussed . . .”); see also Ex. 1001, 11:30-12:55; Ex. 1006, ¶¶ 42-44.) At
`
`the time of the effective filing date of the ’988 patent, it was known that using
`
`(111)(fcc) [1e] provides a closed packed template surface able to grow more robust
`
`magnetic films with more predictable properties (Ex. 1010, pp. 9375-76) and
`
`better anisotropy (Ex. 1006, ¶¶ 43-44). Studies focused on the structure shown in
`
`Schematic A above and its relationship to magnetic anisotropy long before the
`
`effective filing date of the ’988 patent. (See, e.g., Ex. 1001, 9:15-12:55.) Using
`
`dc-803629
`
`9
`
`

`
`Docket No.: 357040000034
`
`(111)(fcc) [1e] to grow (bcc) structured films of Fe, the world’s most common
`
`magnetic material, was also known. (Id.; see also Ex. 1010, pp. 9375-76.)
`
`
`
`Nor were the “invented … new set of six” variants yielding “special
`
`orientational relationships” new at the time of the effective filing date of the
`
`’988 patent. (See Ex. 1001, 14:50-65.) The same six crystallographic variants
`
`were known at least three years before the effective filing date of the ’988 patent.
`
`(Ex. 1011, p. 134, ¶ 4.) The concept of breaking variant “symmetry” in the same
`
`six variants was also known and had already been related to improved magnetic
`
`properties. (Id., pp. 140-41, ¶ 3; see also Ex. 1008, p. 5777; Ex. 1006, ¶ 37.)
`
`C.
`
`’988 Patent Prosecution History
`
`On August 29, 2003, Application No. 10/415,757 (the “’757 Application”)
`
`(Ex. 1002) entered the national stage in the U.S. Patent and Trademark Office
`
`(“USPTO”) under 35 U.S.C. § 371(c). On December 19, 2005, the USPTO issued
`
`a Non-Final Rejection rejecting claims 118-30, 134-37, and 140-58 based on
`
`35 U.S.C. § 102 as being anticipated by or, in the alternative, under 35 U.S.C.
`
`§ 103, as being obvious in view of Lambeth, et al. (U.S. Patent No. 6,248,416)
`
`(“Lambeth ’416”). (Ex. 1003.) The Examiner also indicated that claims 131-33,
`
`138, and 139 contained allowable subject matter.
`
`The Applicant traversed the rejections under 35 U.S.C. §§ 102/103 by
`
`arguing that Lambeth ’416 did not disclose a uniaxial symmetry broken structure
`
`dc-803629
`
`10
`
`

`
`Docket No.: 357040000034
`
`because Lambeth ’416 relates to the growth of an (fcc) magnetic layer which
`
`cannot achieve such symmetry. (Ex. 1004, p. 14.) Applicant argued that, though
`
`Lambeth ’416 discloses “a (111) template under a (110) bcc layer, . . . only
`
`3 variants were found . . . [and such a] 3 variant system will not yield the desirable
`
`uniaxial symmetry broken magnetic properties of the present invention.” (Id.)
`
`The Examiner issued a notice of allowance on July 28, 2006, of all pending
`
`claims directed toward the elected species. (Ex. 1005.) The reason given for
`
`allowance was that “Lambeth ’416 fails to teach or suggest a uniaxial symmetry
`
`broken structure and a hexagonal (111) atomic template with a bcc-d magnetic
`
`layer (see Applicant’s arguments in the response filed March 17, 2006).” (Id., p. 3.)
`
`The Applicant paid the issue fee on September 13, 2006, and the ’757 Application
`
`issued as U.S. Patent No. 7,128,988 on October 31, 2006.
`
`Applicant filed a Request for a Certificate of Correction on November 3,
`
`2010, to add a priority claim to U.S. Provisional Application No. 60/315,920, filed
`
`on August 29, 2001. The Certificate issued on December 7, 2010.
`
`V. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3)
`A claim subject to inter partes review is given its “broadest reasonable
`
`construction in light of the specification of the patent in which it appears.”
`
`37 C.F.R. § 42.100(b). Petitioner submits, for the purposes of this inter partes
`
`review only, that the claim terms are presumed to take on their broadest reasonable
`
`dc-803629
`
`11
`
`

`
`Docket No.: 357040000034
`
`ordinary and customary meaning to a person of ordinary skill in light of the
`
`specification of the ’988 patent. To Petitioner’s knowledge, no court has construed
`
`any term of the ’988 patent. All claim terms have been accorded their broadest
`
`reasonable construction in light of the specification including their ordinary and
`
`customary meaning. Petitioner reserves the right to advocate a different
`
`construction in district court or any other forum if necessary.
`
`The focus of the inquiry regarding the meaning of a claim should be what
`
`would be reasonable to one of ordinary skill in the art. In re Suitco Surface, Inc.,
`
`603 F.3d 1255, 1260 (Fed. Cir. 2010). “In the absence of an express intent to
`
`impart a novel meaning . . . , an inventor’s claim terms take on their ordinary
`
`meaning.” Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir.
`
`2002). This presumption is only overcome if the patentee “has disavowed or
`
`disclaimed scope of coverage, by using words or expressions of manifest exclusion
`
`or restriction, representing a clear disavowal of claim scope.” Brookhill-Wilk 1,
`
`LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1299 (Fed. Cir. 2003).
`
`The ’988 patent contains two independent claims, 1 and 27. Each recites a
`
`“uniaxial” structure. One of ordinary skill in the art would have understood that
`
`the ordinary meaning of a “uniaxial” structure is a structure that has a single easy
`
`magnetization axis aligned in a particular direction. (Ex. 1006, ¶ 71.) The
`
`language of the claims is consistent with this construction. The only dependent
`
`dc-803629
`
`12
`
`

`
`Docket No.: 357040000034
`
`claims including an additional “uniaxial” limitation, claims 17, 18, 38, and 40,
`
`merely specify the identity and location of layers with this property. The
`
`specification is also consistent. For example, it explains that uniaxial anisotropy is
`
`achieved by “align[ing the easy magnetic axis] along [an] applied magnetic field,
`
`while the hard axis is perpendicular to this applied field,” such as during film
`
`deposition. (Ex. 1001, 4:60-65.) In addition, the ’988 patent presents a
`
`mathematical definition of “uniaxial anisotropy” in terms of an “energy density
`
`function” having “a single maximum and a single minimum” (id., 1:56-62), that
`
`one of skill in the art would have understood to be consistent with this meaning
`
`(Ex. 1006, ¶¶ 23, 68, 71). The Applicant did not clearly disavow the ordinary
`
`meaning of the term “uniaxial,” argue for a specific definition in the prosecution
`
`history, or amend the claims to refine the term. As a result, the broadest
`
`reasonable construction of “uniaxial” is “having a single easy magnetization axis
`
`aligned in a particular direction.”
`
`Claims 1 and 27 also recite a “bcc-d” structure. One of ordinary skill in the
`
`art would have understood that the ordinary meaning of a “bcc-d” structure to be a
`
`(bcc) structure or a structure derived from (bcc). (Ex. 1006, ¶ 22, fn. 1.) The
`
`language of the claims and specification is consistent with this construction. The
`
`specification explicitly defines a “bcc-d” structure as “either a bcc or a bcc
`
`derivative crystal structure.” (Ex. 1001, 14:66-67.) The Applicant did not argue
`
`dc-803629
`
`13
`
`

`
`Docket No.: 357040000034
`
`for a specific definition of “bcc-d” in the prosecution history, nor amend the claims
`
`to refine the term. As a result, the broadest reasonable construction of “bcc-d”
`
`structure is “either a bcc or a bcc derivative crystal structure.”
`
`Claims 1 and 27 also recite a structure or device comprising a “symmetry
`
`broken” structure. One of ordinary skill in the art would have understood that the
`
`ordinary meaning of a “symmetry broken” structure is “a structure with unequal
`
`volumes of crystallographic variants in either a three or six variant system.”
`
`(Ex. 1006, ¶ 37.) The specification uses the term “symmetry broken” structure
`
`consistently with this construction. The specification indicates that a “symmetry
`
`broken” structure exists in the three variant system of FIG. 3 “[w]hen the volumes
`
`of the three variants are not equal” (Ex. 1001, 16:34-36) and in six variant systems
`
`that “do not contain an equal amount of all six of the (110) textured bcc-d variants”
`
`(id., 23:37-41). The claim language does not preclude this definition, nor did the
`
`Applicant clearly disavow the meaning by arguing for a specific definition of
`
`“symmetry broken” structure in the prosecution history. As a result, the broadest
`
`reasonable construction of “symmetry broken” is “a structure with unequal
`
`volumes of crystallographic variants in either a three or six variant system.”
`
`Independent claims 1 and 27 further recite, in part, a structure or device
`
`comprising an “atomic template.” One of ordinary skill in the art would have
`
`understood that the ordinary meaning of “atomic template” is an atomic pattern
`
`dc-803629
`
`14
`
`

`
`Docket No.: 357040000034
`
`used to guide formation of a film. (Ex. 1006, ¶ 35.) Not only are the claims
`
`consistent with this construction, but dependent claim 8 further specifies that the
`
`template is an atomic-scale guide for material formation. Specifically, claim 8
`
`claims that the “bcc-d” layer is “epitaxially grown on said (111) textured
`
`hexagonal atomic template” and, as a result of the template’s guidance, “has a
`
`(110) crystalline texture.” (Ex. 1001, claim 8.) The specification is also consistent
`
`with the construction and the Applicant did not disavow the ordinary meaning of
`
`the term in prosecution. As a result, the broadest reasonable construction of
`
`“atomic template” is “an atomic pattern used to guide formation of a film.”
`
`VI. DETAILED EXPLANATION OF GROUNDS FOR INVALIDITY
`Pursuant to 37 C.F.R. §§ 42.22(a)(1) and 42.104(b), Petitioner requests the
`
`cancellation of claims 1-3, 6-19, 21-31, 34, 38, and 39 of the ’988 patent based on
`
`the following grounds for invalidity:
`
`Ground Reference(s)
`1
`Shen and Dill
`
`Basis
`35 U.S.C. §103
`
`Claims
`1 and 27
`
`Dill and Shen
`
`35 U.S.C. §103
`
`35 U.S.C. §103
`
`1, 3, 6-11, 13-14, 17-19,
`22, 24, 27-30, 34, and 38
`12, 15, 16, 21, and 23
`
`Dill, Shen, and
`Heim
`Dill, Shen, and
`Lambeth I
`Dill, Shen, and
`Noguchi
`
`2
`
`3
`
`4
`
`5
`
`
`
`dc-803629
`
`35 U.S.C. §103
`
`2, 25, 26, and 31
`
`35 U.S.C. §103
`
`39
`
`15
`
`

`
`Docket No.: 357040000034
`
`In the following sections, Petitioner presents a discussion of how the claims
`
`are unpatentable under the statutory grounds raised. (37 C.F.R. § 42.104(b)(4).)
`
`The grounds for invalidity set forth below are supported by the declaration
`
`of Dr. Robert Sinclair, who provides testimony regarding the prior art and the
`
`understanding of one of ordinary skill in the art. Dr. Sinclair’s declaration is
`
`provided as Exhibit No. 1006 to this Petition.
`
`A. Ground 1: Shen in View of Dill Renders Claims 1 and 27 Obvious
`
`Ground 1 is based on J. Shen et al., “Structural and magnetic phase
`
`transitions of Fe on stepped Cu (111),” Phys. Rev. B 56, 17, 134-43 (1997)
`
`(“Shen”) (Ex. 1011) in view of U.S. Patent No. 6,023,395 (“Dill”) (Ex. 1009).
`
`Shen
`
`1.
`Shen was published on November 1, 1997, more than three years before the
`
`August 29, 2001 effective filing date of the ’988 patent, and therefore qualifies as
`
`prior art under 35 U.S.C. § 102(b).
`
`Shen describes the evolution of the structural and magnetic properties of
`
`“bcc-d” (bcc) Fe films [1b] grown on the surface of a copper (Cu) substrate [1a].
`
`(Ex. 1011, Title.) Shen discloses that the Fe films exhibit dramatically higher
`
`magnetization when they have the symmetry broken (bcc) structure than they do
`
`with the (fcc) structure. (Id., p. 134, ¶ 4 (5); see also Ex. 1006, ¶ 52.) The (111)
`
`surface of the substrate is used as a hexagonally textured atomic template [1e] for
`
`dc-803629
`
`16
`
`

`
`Docket No.: 357040000034
`
`forming the (110)(bcc) structure in the Fe film [1b]. (Id.) Step features in the
`
`template [1e] cause symmetry breaking in the six-fold variant system in the
`
`(110)(bcc) Fe films. (Ex. 1011, p. 134; see also id., FIG. 4; p. 136, ¶ 1; FIG. 2 and
`
`caption.) Shen discloses that the Cu(111) template [1e] also allows the Fe films to
`
`undergo a structural transition from (fcc) to (bcc) above a certain thickness. (Id.,
`
`Abstract; FIG. 4 and caption.)
`
`Dill
`
`2.
`Dill issued on February 8, 2000, more than one year before the August 29,
`
`2001 effective filing date of the ’988 patent, and therefore qualifies as prior art
`
`under 35 U.S.C. § 102(b). The application from which Dill issued was filed on
`
`May 29, 1998, and therefore also qualifies as prior art under 35 U.S.C. § 102(e).
`
`Dill discloses a multi-layer magnetic device, such as a magnetic tunnel
`
`junction (MTJ). (Ex. 1009, 2:41-51.) Dill discloses that adding a uniaxial
`
`(111)(fcc)/(bcc) structure to the MTJ solves “the problem[]” of “developing a
`
`structure that generates an output signal that is both stable and linear with the
`
`magnetic field strength” and that can “maintain [the MTJ] in a single magnetic
`
`domain state” to prevent the domain walls from shifting positions. (Id., 2:41-51.)
`
`The structure is formed from a seed layer (template, [1e]) that is disposed on top of
`
`an alumina substrate (G1) [1a]. (Id., 8:37-41; FIG. 4A.) The seed layer [1e] has a
`
`natural (111)(fcc) crystal structure. (Id.) At least the interface layer of layer 118
`
`dc-803629
`
`17
`
`

`
`Docket No.: 357040000034
`
`(“bcc-d layer”) [1b], grown under the influence of the seed layer, has a natural
`
`(bcc) structure. (Id., 5:22-7:52.) Dill further discloses that uniaxial anisotropy is
`
`“induce[d]” in layer 118 [1b] by growing it under the influence of a magnetic field
`
`in the direction 119. (Id., 10:47-10:52; FIG. 4A.)
`
`Shen in View of Dill Renders Claims 1 and 27 Obvious
`
`3.
`Arguably, Shen discloses all the requirements of independent claims 1 and
`
`27. Even if Shen does not explicitly disclose uniaxial asymmetry, however, it
`
`would have been obvious to add uniaxial asymmetry, as disclosed in Dill, to the
`
`structure of Shen in order to improve magnetic properties. This will be discussed
`
`in more detail below. The claim chart at the end of this section maps disclosures of
`
`Shen and Dill to the limitations of claims 1 and 27 of the ’988 patent.
`
`Claim 1 includes “[a] magnetic material structure comprising: a substrate”
`
`[1a]. Shen discloses the substrate [1a] in the form of a copper (Cu) substrate
`
`(Ex. 1011, FIG. 4.) Shen discloses the claimed “at least one bcc-d layer” [1b] in
`
`the form of Fe films grown on the “Cu(111)” surface [1e] of the Cu substrate [1a]:
`
`The magnetism and its correlation with morphology and structure of
`ultrathin Fe/Cu(111) films have been studied. At room temperature,
`the films grow in a quasi-one-dimensional form (stripes) in the
`submonolayer range . . . At low thickness (<2.3 ML) the films adopt
`the fcc structure from the substrate and later transform to bcc(110)
`structure . . .
`(Id., Abstract (emphasis added).)
`
`dc-803629
`
`18
`
`

`
`Docket No.: 357040000034
`
`
`
`
`
`
`
`(Id., bottom portion of FIG. 4 and caption, annotated.)
`
`Because the (bcc) Fe layer [1b] is grown under the encouragement of the
`
`Cu(111) surface, the latter is the claimed “(111) hexagonal atomic template” [1e].
`
`In fact, Shen explicitly shows how the hexagonal structure of Cu(111) [1e] imparts
`
`the (bcc)(110) structure to the Fe films [1b] in FIG. 4. (Id., FIG. 4.) The Fe films
`
`[1b] transition from the (fcc) structure of the Cu(111) template [1e] to this (bcc)
`
`structure after attaining a thickness in excess of 2.3 atomic monolayers (ML). (Id.)

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket