`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
`_______________
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`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.
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`TABLE OF CONTENTS
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`Page
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`I.
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`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
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`E.
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`Docket No.: 357040000034
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`EXHIBIT LIST FOR INTER PARTES REVIEW OF
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`U.S. PATENT NO. 7,128,988
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`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
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`1008
`
`1009
`1010
`
`1011
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`1012
`1013
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`1014
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`Docket No.: 357040000034
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`TDK Corporation (“Petitioner” or “TDK”) petitions for inter partes review
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`in accordance with 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 et seq. of
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`claims 1-3, 6-19, 21-31, 34, 38, and 39 of U.S. Patent No. 7,128,988 (“the
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`’988 patent” (Ex. 1001)). The ’988 patent issued on October 31, 2006, and is
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`assigned to Lambeth Magnetic Structures, LLC (“Patent Owner” or “Lambeth”).
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`I.
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`NOTICES AND STATEMENTS
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`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
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`Toshiba Corporation, Toshiba America Information Systems, Inc., Toshiba
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`America Electronic Components, Inc., and Toshiba of Canada, Ltd. (collectively
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`“Toshiba”), Headway Technologies, Inc., SAE Magnetics (H.K.) Ltd., TDK
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`Philippines Corporation, and Petitioner TDK are the real parties-in-interest.
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`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
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`Lambeth is currently alleging infringement by Toshiba of claims 1, 3, 6, 8,
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`11, 12, 17, 19, 23, 27, 28, and 29 of the ’988 patent in the U.S. District Court for
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`the Western District of Pennsylvania. See Lambeth Magnetic Structures, LLC v.
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`Toshiba Corp., Civil Action No. 2:14-cv-01526-CB (W.D. Pa.). To date, the
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`’988 patent has not been the subject of any inter partes review or reexamination
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`proceeding. The ’988 patent issued from US Application Serial No. 10/415,757,
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`which was a national
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`stage application of
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`International Application
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`Docket No.: 357040000034
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`No. PCT/US02/27327 filed on August 29, 2002. PCT/US02/27327 claims priority
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`to US Provisional Application Serial No. 60/315,920 filed on August 29, 2001.
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`C. Lead and Back-up Counsel Under 37 C.F.R. § 42.8(b)(3)
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`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner identifies the following
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`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
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`Service Information Under 37 C.F.R. § 42.8(b)(4)
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`Service information for lead and back-up counsel is provided above.
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`Petitioner accepts service at: 35704-988-IPR@mofo.com.
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`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
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`available for inter partes review and that Petitioner is not barred or estopped from
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`requesting an inter partes review challenging the patent claims on the grounds
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`identified in this Petition.
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`III.
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`INTRODUCTION
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`The ’988 patent is directed to improving the magnetic properties in magnetic
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`films and related devices by using a template to achieve a desired atomic structure
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`for a magnetic film layer. The ’988 patent states that this desired film structure is
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`novel. However, both the structure of the magnetic film layer and the method of
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`achieving this film structure were described in publications before the effective
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`filing date of the ’988 patent.
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`The references presented herein establish that prior to the effective filing
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`date of the ’988 patent, the challenged claims would have been obvious to those of
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`ordinary skill in the art. Section IV of this Petition summarizes the ’988 patent and
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`its technological background. Section V addresses certain claim construction
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`issues. Section VI sets forth the detailed grounds for invalidity of claims 1-3, 6-19,
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`21-31, 34, 38, and 39. This showing is accompanied by the Declaration of
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`Dr. Robert Sinclair (“Sinclair Decl.” (Ex. 1006)). Accordingly, Petitioner
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`respectfully requests a Decision to institute inter partes review.
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`IV. THE ’988 PATENT
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`A. Overview
`The ’988 patent issued from the national stage of International Patent
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`Application No. PCT/US02/27327, which was filed on August 29, 2002, and
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`designated the U.S. for national stage entry. PCT/US02/27327 claims priority to
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`U.S. Provisional Application No. 60/315,920, which was filed on August 29, 2001.
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`Under 35 U.S.C. § 371(c), the ’988 patent is entitled to the August 29, 2001, filing
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`date of Provisional Application No. 60/315,920.
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`B.
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`Background
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`In order to introduce the ’988 patent in its proper context, the first part of
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`this section presents an overview of magnetic thin film technology. After that
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`overview, this section addresses the specific disclosure of the ’988 patent.
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`Overview of Relevant Magnetic Film Technology
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`Magnetic films are used in many devices. For example, sensors for
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`detecting magnetic field strength and magnetic read/write heads for writing to
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`magnetic storage media typically include components formed of stacks of thin
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`magnetic films. (Ex. 1006, ¶ 32.) The magnetic properties of these films can be
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`carefully controlled by controlling film deposition processes. (Id., ¶¶ 32, 40-41.)
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`Doing so effectively, however, requires an understanding of the structure/property
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`relationships in these materials. (Id., ¶ 32.) The ’988 patent purportedly discloses
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`improved structural/property relationships.
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`“Magnetic materials” retain their own, internal magnetic fields having a
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`“magnetization” or “magnetization direction.” (Id.) The strength and direction of
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`a material’s magnetization is dictated, in part, by its crystal structure. (Id., ¶ 33.)
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`Thin films tend to form “natural structure” in their default, unless they are
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`grown on a “template” that encourages them to form another structure. (Id.,
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`¶¶ 35-36, 43.) The most common magnetic material, iron (Fe), for example, has a
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`body centered cubic (bcc) natural structure. (Id.) Face centered cubic (fcc) is a
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`common natural structure of magnetic materials that contain nickel (Ni). (Id.)
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`However, both materials can be made to form thin films with other structures using
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`appropriate templates. (Id.) Templates are often specified by their surface
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`structure and symmetry, which can dictate the structure of the films formed on top
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`of them. One common example is the (111) hexagonal template which has a
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`“close packed,” or especially dense, surface structure known for many decades to
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`be advantageous for growing magnetic films. (Id., ¶¶ 42-43.)
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`Because magnetic properties are dictated in part by film structure, templates
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`can be used to manipulate magnetic properties. Doing so was well known in the
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`art in 2001. (Ex. 1001, 9:15-11:27; see, e.g., FIG. 3.) Templates can be used, for
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`example, to grow films including multiple “variants” which have the same crystal
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`structure, but possess different orientations. (Ex. 1006, ¶¶ 35-36.) Each variant
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`has a different preferred magnetization direction. (Id., ¶ 37.)
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`“Magnetic anisotropy” is a material’s overall preference for a particular
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`magnetization direction. (Id., ¶ 33.) A more anisotropic material will have a
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`greater preference. (Id.) “Uniaxial anisotropy” is a severe form of anisotropy
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`represented by a preference for a single axis called the “easy magnetization axis.”
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`(Id.) Anisotropy was known prior to August 2001 to be beneficial for magnetic
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`recording devices. (Id.; see also Ex. 1007, pp. 81-171.) This is because anisotropy
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`hinders reversal or changes in magnetization upon exposure to a magnetic field.
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`(Ex. 1006, ¶ 33.) All of this was well known years before the August 2001
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`effective filing date of the ’988 patent. (Id.)
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`It was also well known prior to August 2001 that multiple variants generally
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`decrease anisotropy. (Id., ¶¶ 36-37.) This is because the overall magnetization
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`direction of the film is the sum of the magnetization of its variants, and different
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`variants can oppose one another. (Id.) Moreover, multiple variants tend to form in
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`equal proportions. (Id.; see also Ex. 1001, 16:32-36.)
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`The ’988 patent refers to this tendency of variants to form in equal
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`proportions as “symmetry.” (Ex. 1001, 16:32-36.) A “symmetry broken” film
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`having unequal amounts of variants generally has greater anisotropy. (Id.)
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`Therefore, increasing the volume fraction of certain variants at the expense of
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`others increases anisotropy. (See, e.g., Ex. 1008, p. 5777 (enhancing anisotropy by
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`“nucleating favorable variants or increasing the volume fraction of the favorable
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`variants”).) This was understood before August 2001. (Ex. 1006, ¶ 37.)
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`The Disclosure of the ’988 Patent
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`The ’988 patent is directed to an allegedly novel film structure that achieves
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`high magnetization and anisotropy through symmetry breaking. Improving
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`anisotropy in magnetic writing devices improves reliability by preventing
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`uncontrolled changes in head magnetization. (Id., ¶ 33.) The ’988 patent asserts
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`that “the invention of orientation control of bcc and bcc derivative materials [in
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`this structure] allows new devices . . . [with] good orientation, high magnetization,
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`high permeability and low losses.” (Ex. 1001, 13:4-8.)
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`The claims are directed to a “bcc-d” magnetic layer, which is a magnetic
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`film naturally having (bcc) or related structure (Id., 14:65-67.) The layer is formed
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`on the surface of a template that directs the layer’s growth to form a uniaxial,
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`broken symmetry structure. (Id.) The entire layer stack is disposed on top of a
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`substrate. (Id.) Claim 1 broadly claims these three basic components of a
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`magnetic layer stack formed using a template as follows:
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`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].
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`(Id., claim 1.)
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`The claimed “substrate” [1a] provides structure support for the other layers
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`in the film stack. The claimed “bcc-d layer” [1b] is a magnetic film naturally
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`having a body-centered cubic crystal (bcc) or a structure derived from (bcc). (Id.,
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`14:65-67.) The bcc-d layer is “uniaxial” [1c], meaning that it has a single easy
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`magnetization axis aligned in a particular direction. (See Section V, infra.) The
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`claimed “(111) textured hexagonal atomic template” [1e] is located between the
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`substrate and the bcc-d layer [1f]. The patent gives examples of the (111) textured
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`hexagonal atomic template [1e]: (a) the (111) surface of a face centered cubic (fcc)
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`and (b) the (0002) surface of hexagonal closed packed (hcp) structured material.
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`(Ex. 1001, 14:55-57; see also Ex. 1006, ¶ 30.)
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`The ’988 patent claims that the “bcc-d” layer [1b] has a “symmetry broken
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`structure” [1d]. The specification indicates that a “symmetry broken” material
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`exists when a full three or six crystallographic variant set does not contain equal
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`amounts of each of the variants. (See, e.g., Ex. 1001, 23:38-41; see also id.,
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`16:34-36 (“symmetry broken” structure exists in the three variant system of FIG. 3
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`“[w]hen the volumes of the three variants are not equal”).) The specification
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`explains symmetry breaking in terms of “controlling the epitaxial growth
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`conditions” of the “bcc-d” overlayer [1b] on the template [1e] to select a “very
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`special exchange coupled subset” of “a new set of six crystalline variants with
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`special orientational relationships.” (Id., 14:48-55.) This is the only method of
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`creating a “symmetry broken uniaxial” [1c-d] film disclosed in the ’988 patent.
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`Claim 1 of the ’988 patent claims the stack represented in Schematic A as follows:
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`To other layers
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`. . .
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`[1b] magnetic bcc-d layer: (110)(bcc)
`[1e] (111) textured hexagonal template: (111)(fcc) or (0002)(hcp)
`To substrate [1a] and other layers
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`. . .
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`(Schematic A: Structure in claim 1 of the ’988 Patent.) (Ex. 1006, ¶ 30.)
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`This layer stack was not new in August 2001 and had already been
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`incorporated into magnetic devices. (Ex. 1009, 8:35-47; FIG. 4A.) Moreover,
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`(111)(fcc) surfaces [1e] have been used for decades as a template layer for growing
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`magnetic films. (See, e.g., Ex. 1010, p. 9375 (“The literature of the growth of
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`ferromagnetic metals on fcc(111) surfaces is extensive so that only a few examples
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`can be discussed . . .”); see also Ex. 1001, 11:30-12:55; Ex. 1006, ¶¶ 42-44.) At
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`the time of the effective filing date of the ’988 patent, it was known that using
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`(111)(fcc) [1e] provides a closed packed template surface able to grow more robust
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`magnetic films with more predictable properties (Ex. 1010, pp. 9375-76) and
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`better anisotropy (Ex. 1006, ¶¶ 43-44). Studies focused on the structure shown in
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`Schematic A above and its relationship to magnetic anisotropy long before the
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`effective filing date of the ’988 patent. (See, e.g., Ex. 1001, 9:15-12:55.) Using
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`(111)(fcc) [1e] to grow (bcc) structured films of Fe, the world’s most common
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`magnetic material, was also known. (Id.; see also Ex. 1010, pp. 9375-76.)
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`
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`Nor were the “invented … new set of six” variants yielding “special
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`orientational relationships” new at the time of the effective filing date of the
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`’988 patent. (See Ex. 1001, 14:50-65.) The same six crystallographic variants
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`were known at least three years before the effective filing date of the ’988 patent.
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`(Ex. 1011, p. 134, ¶ 4.) The concept of breaking variant “symmetry” in the same
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`six variants was also known and had already been related to improved magnetic
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`properties. (Id., pp. 140-41, ¶ 3; see also Ex. 1008, p. 5777; Ex. 1006, ¶ 37.)
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`C.
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`’988 Patent Prosecution History
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`On August 29, 2003, Application No. 10/415,757 (the “’757 Application”)
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`(Ex. 1002) entered the national stage in the U.S. Patent and Trademark Office
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`(“USPTO”) under 35 U.S.C. § 371(c). On December 19, 2005, the USPTO issued
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`a Non-Final Rejection rejecting claims 118-30, 134-37, and 140-58 based on
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`35 U.S.C. § 102 as being anticipated by or, in the alternative, under 35 U.S.C.
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`§ 103, as being obvious in view of Lambeth, et al. (U.S. Patent No. 6,248,416)
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`(“Lambeth ’416”). (Ex. 1003.) The Examiner also indicated that claims 131-33,
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`138, and 139 contained allowable subject matter.
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`The Applicant traversed the rejections under 35 U.S.C. §§ 102/103 by
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`arguing that Lambeth ’416 did not disclose a uniaxial symmetry broken structure
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`because Lambeth ’416 relates to the growth of an (fcc) magnetic layer which
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`cannot achieve such symmetry. (Ex. 1004, p. 14.) Applicant argued that, though
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`Lambeth ’416 discloses “a (111) template under a (110) bcc layer, . . . only
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`3 variants were found . . . [and such a] 3 variant system will not yield the desirable
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`uniaxial symmetry broken magnetic properties of the present invention.” (Id.)
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`The Examiner issued a notice of allowance on July 28, 2006, of all pending
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`claims directed toward the elected species. (Ex. 1005.) The reason given for
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`allowance was that “Lambeth ’416 fails to teach or suggest a uniaxial symmetry
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`broken structure and a hexagonal (111) atomic template with a bcc-d magnetic
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`layer (see Applicant’s arguments in the response filed March 17, 2006).” (Id., p. 3.)
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`The Applicant paid the issue fee on September 13, 2006, and the ’757 Application
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`issued as U.S. Patent No. 7,128,988 on October 31, 2006.
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`Applicant filed a Request for a Certificate of Correction on November 3,
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`2010, to add a priority claim to U.S. Provisional Application No. 60/315,920, filed
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`on August 29, 2001. The Certificate issued on December 7, 2010.
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`V. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3)
`A claim subject to inter partes review is given its “broadest reasonable
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`construction in light of the specification of the patent in which it appears.”
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`37 C.F.R. § 42.100(b). Petitioner submits, for the purposes of this inter partes
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`review only, that the claim terms are presumed to take on their broadest reasonable
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`ordinary and customary meaning to a person of ordinary skill in light of the
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`specification of the ’988 patent. To Petitioner’s knowledge, no court has construed
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`any term of the ’988 patent. All claim terms have been accorded their broadest
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`reasonable construction in light of the specification including their ordinary and
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`customary meaning. Petitioner reserves the right to advocate a different
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`construction in district court or any other forum if necessary.
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`The focus of the inquiry regarding the meaning of a claim should be what
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`would be reasonable to one of ordinary skill in the art. In re Suitco Surface, Inc.,
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`603 F.3d 1255, 1260 (Fed. Cir. 2010). “In the absence of an express intent to
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`impart a novel meaning . . . , an inventor’s claim terms take on their ordinary
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`meaning.” Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir.
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`2002). This presumption is only overcome if the patentee “has disavowed or
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`disclaimed scope of coverage, by using words or expressions of manifest exclusion
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`or restriction, representing a clear disavowal of claim scope.” Brookhill-Wilk 1,
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`LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1299 (Fed. Cir. 2003).
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`The ’988 patent contains two independent claims, 1 and 27. Each recites a
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`“uniaxial” structure. One of ordinary skill in the art would have understood that
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`the ordinary meaning of a “uniaxial” structure is a structure that has a single easy
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`magnetization axis aligned in a particular direction. (Ex. 1006, ¶ 71.) The
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`language of the claims is consistent with this construction. The only dependent
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`claims including an additional “uniaxial” limitation, claims 17, 18, 38, and 40,
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`merely specify the identity and location of layers with this property. The
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`specification is also consistent. For example, it explains that uniaxial anisotropy is
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`achieved by “align[ing the easy magnetic axis] along [an] applied magnetic field,
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`while the hard axis is perpendicular to this applied field,” such as during film
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`deposition. (Ex. 1001, 4:60-65.) In addition, the ’988 patent presents a
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`mathematical definition of “uniaxial anisotropy” in terms of an “energy density
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`function” having “a single maximum and a single minimum” (id., 1:56-62), that
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`one of skill in the art would have understood to be consistent with this meaning
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`(Ex. 1006, ¶¶ 23, 68, 71). The Applicant did not clearly disavow the ordinary
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`meaning of the term “uniaxial,” argue for a specific definition in the prosecution
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`history, or amend the claims to refine the term. As a result, the broadest
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`reasonable construction of “uniaxial” is “having a single easy magnetization axis
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`aligned in a particular direction.”
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`Claims 1 and 27 also recite a “bcc-d” structure. One of ordinary skill in the
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`art would have understood that the ordinary meaning of a “bcc-d” structure to be a
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`(bcc) structure or a structure derived from (bcc). (Ex. 1006, ¶ 22, fn. 1.) The
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`language of the claims and specification is consistent with this construction. The
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`specification explicitly defines a “bcc-d” structure as “either a bcc or a bcc
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`derivative crystal structure.” (Ex. 1001, 14:66-67.) The Applicant did not argue
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`for a specific definition of “bcc-d” in the prosecution history, nor amend the claims
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`to refine the term. As a result, the broadest reasonable construction of “bcc-d”
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`structure is “either a bcc or a bcc derivative crystal structure.”
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`Claims 1 and 27 also recite a structure or device comprising a “symmetry
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`broken” structure. One of ordinary skill in the art would have understood that the
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`ordinary meaning of a “symmetry broken” structure is “a structure with unequal
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`volumes of crystallographic variants in either a three or six variant system.”
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`(Ex. 1006, ¶ 37.) The specification uses the term “symmetry broken” structure
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`consistently with this construction. The specification indicates that a “symmetry
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`broken” structure exists in the three variant system of FIG. 3 “[w]hen the volumes
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`of the three variants are not equal” (Ex. 1001, 16:34-36) and in six variant systems
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`that “do not contain an equal amount of all six of the (110) textured bcc-d variants”
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`(id., 23:37-41). The claim language does not preclude this definition, nor did the
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`Applicant clearly disavow the meaning by arguing for a specific definition of
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`“symmetry broken” structure in the prosecution history. As a result, the broadest
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`reasonable construction of “symmetry broken” is “a structure with unequal
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`volumes of crystallographic variants in either a three or six variant system.”
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`Independent claims 1 and 27 further recite, in part, a structure or device
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`comprising an “atomic template.” One of ordinary skill in the art would have
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`understood that the ordinary meaning of “atomic template” is an atomic pattern
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`used to guide formation of a film. (Ex. 1006, ¶ 35.) Not only are the claims
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`consistent with this construction, but dependent claim 8 further specifies that the
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`template is an atomic-scale guide for material formation. Specifically, claim 8
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`claims that the “bcc-d” layer is “epitaxially grown on said (111) textured
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`hexagonal atomic template” and, as a result of the template’s guidance, “has a
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`(110) crystalline texture.” (Ex. 1001, claim 8.) The specification is also consistent
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`with the construction and the Applicant did not disavow the ordinary meaning of
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`the term in prosecution. As a result, the broadest reasonable construction of
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`“atomic template” is “an atomic pattern used to guide formation of a film.”
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`VI. DETAILED EXPLANATION OF GROUNDS FOR INVALIDITY
`Pursuant to 37 C.F.R. §§ 42.22(a)(1) and 42.104(b), Petitioner requests the
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`cancellation of claims 1-3, 6-19, 21-31, 34, 38, and 39 of the ’988 patent based on
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`the following grounds for invalidity:
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`Ground Reference(s)
`1
`Shen and Dill
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`Basis
`35 U.S.C. §103
`
`Claims
`1 and 27
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`Dill and Shen
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`35 U.S.C. §103
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`35 U.S.C. §103
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`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
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`2
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`3
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`4
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`5
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`
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`35 U.S.C. §103
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`2, 25, 26, and 31
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`35 U.S.C. §103
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`39
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`15
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`In the following sections, Petitioner presents a discussion of how the claims
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`are unpatentable under the statutory grounds raised. (37 C.F.R. § 42.104(b)(4).)
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`The grounds for invalidity set forth below are supported by the declaration
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`of Dr. Robert Sinclair, who provides testimony regarding the prior art and the
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`understanding of one of ordinary skill in the art. Dr. Sinclair’s declaration is
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`provided as Exhibit No. 1006 to this Petition.
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`A. Ground 1: Shen in View of Dill Renders Claims 1 and 27 Obvious
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`Ground 1 is based on J. Shen et al., “Structural and magnetic phase
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`transitions of Fe on stepped Cu (111),” Phys. Rev. B 56, 17, 134-43 (1997)
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`(“Shen”) (Ex. 1011) in view of U.S. Patent No. 6,023,395 (“Dill”) (Ex. 1009).
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`Shen
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`1.
`Shen was published on November 1, 1997, more than three years before the
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`August 29, 2001 effective filing date of the ’988 patent, and therefore qualifies as
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`prior art under 35 U.S.C. § 102(b).
`
`Shen describes the evolution of the structural and magnetic properties of
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`“bcc-d” (bcc) Fe films [1b] grown on the surface of a copper (Cu) substrate [1a].
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`(Ex. 1011, Title.) Shen discloses that the Fe films exhibit dramatically higher
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`magnetization when they have the symmetry broken (bcc) structure than they do
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`with the (fcc) structure. (Id., p. 134, ¶ 4 (5); see also Ex. 1006, ¶ 52.) The (111)
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`surface of the substrate is used as a hexagonally textured atomic template [1e] for
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`forming the (110)(bcc) structure in the Fe film [1b]. (Id.) Step features in the
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`template [1e] cause symmetry breaking in the six-fold variant system in the
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`(110)(bcc) Fe films. (Ex. 1011, p. 134; see also id., FIG. 4; p. 136, ¶ 1; FIG. 2 and
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`caption.) Shen discloses that the Cu(111) template [1e] also allows the Fe films to
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`undergo a structural transition from (fcc) to (bcc) above a certain thickness. (Id.,
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`Abstract; FIG. 4 and caption.)
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`Dill
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`2.
`Dill issued on February 8, 2000, more than one year before the August 29,
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`2001 effective filing date of the ’988 patent, and therefore qualifies as prior art
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`under 35 U.S.C. § 102(b). The application from which Dill issued was filed on
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`May 29, 1998, and therefore also qualifies as prior art under 35 U.S.C. § 102(e).
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`Dill discloses a multi-layer magnetic device, such as a magnetic tunnel
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`junction (MTJ). (Ex. 1009, 2:41-51.) Dill discloses that adding a uniaxial
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`(111)(fcc)/(bcc) structure to the MTJ solves “the problem[]” of “developing a
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`structure that generates an output signal that is both stable and linear with the
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`magnetic field strength” and that can “maintain [the MTJ] in a single magnetic
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`domain state” to prevent the domain walls from shifting positions. (Id., 2:41-51.)
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`The structure is formed from a seed layer (template, [1e]) that is disposed on top of
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`an alumina substrate (G1) [1a]. (Id., 8:37-41; FIG. 4A.) The seed layer [1e] has a
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`natural (111)(fcc) crystal structure. (Id.) At least the interface layer of layer 118
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`(“bcc-d layer”) [1b], grown under the influence of the seed layer, has a natural
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`(bcc) structure. (Id., 5:22-7:52.) Dill further discloses that uniaxial anisotropy is
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`“induce[d]” in layer 118 [1b] by growing it under the influence of a magnetic field
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`in the direction 119. (Id., 10:47-10:52; FIG. 4A.)
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`Shen in View of Dill Renders Claims 1 and 27 Obvious
`
`3.
`Arguably, Shen discloses all the requirements of independent claims 1 and
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`27. Even if Shen does not explicitly disclose uniaxial asymmetry, however, it
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`would have been obvious to add uniaxial asymmetry, as disclosed in Dill, to the
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`structure of Shen in order to improve magnetic properties. This will be discussed
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`in more detail below. The claim chart at the end of this section maps disclosures of
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`Shen and Dill to the limitations of claims 1 and 27 of the ’988 patent.
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`Claim 1 includes “[a] magnetic material structure comprising: a substrate”
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`[1a]. Shen discloses the substrate [1a] in the form of a copper (Cu) substrate
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`(Ex. 1011, FIG. 4.) Shen discloses the claimed “at least one bcc-d layer” [1b] in
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`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).)
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`(Id., bottom portion of FIG. 4 and caption, annotated.)
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`Because the (bcc) Fe layer [1b] is grown under the encouragement of the
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`Cu(111) surface, the latter is the claimed “(111) hexagonal atomic template” [1e].
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`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
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`[1b] transition from the (fcc) structure of the Cu(111) template [1e] to this (bcc)
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`structure after attaining a thickness in excess of 2.3 atomic monolayers (ML). (Id.)