Case IPR2013-00149
`
`Patent No. 6,455,13 8
`
`Filed on behalf of Textron Innovations Inc
`
`By:
`
`Patrick A. Doody (patrick doody@pillsbuglaw. corn)
`Bryan P. Collinsb(bryan. collinsgquLpillsburylaw. com)
`Pillsbury Winthrop Shaw Pittman LLP
`1650 Tysons Boulevard
`McLean, VA 22102
`Tel: (703) 770-7900
`Fax: (703) 770-7901
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`WAVELOCK ADVANCED TECHNOLOGY CO., LTD.
`Petitioner
`
`V.
`
`TEXTRON INNOVATIONS INC.
`
`Patent Owner
`
`Case IPR2013-00149
`
`Patent 6,455,138
`
`CORRECTED
`
`TEXTRON INNOVATIONS’ PATENT OWNER RESPONSE
`
`PURSUANT TO 37 C.F.R. §42. 120
`
`

`

`TABLE OF CONTENTS
`
`Case IPR2013—00149
`
`Patent No. 6,455,138
`
`Page
`
`Contents
`
`I.
`
`INTRODUCTION .................................................................................................................... 1
`
`II. MATERIAL FACTS ..........................................................I...................................................... 2
`
`III. THE ‘138 PATENT AND KUWAHARA ................................................................................ 5
`
`A. The ‘138Patent ......................................... 6
`
`B. Kuwahara ............................................................................................................................ 8
`
`IV. THE BOARD SHOULD FIND THAT CLAIMS 1-3, 8, 10, 16—19, 21, 25—33, 35, AND 36
`ARE PATENTABLE IN VIEW OF WAVELOCK’S CHALLENGE ................................... 12
`
`A. Inherency Requires the Inherent Element to Necessarily Result and Cannot be Based on
`Probabilities ........................................ .. ............................................................................. 14
`
`B. Wavelock Fails to Carry Its Burden in Proving the Claimed Invention is Inherently Made
`by Kuwahara’s Examples ................................................................................................. 20
`
`1. Dr. Iezzi impermissibly assumes the copolymer resin of Kuwahara is a liquid ......... 22
`2. Even if the Copolymer Resin of Kuwahara were a liquid, there is no evidence that the
`liquid could fill the 500 Angstrom sized voids in Kuwahara’s metallized layer ........ 24
`3. There is no evidence that Kuwahara roller coats the copolymer resin on “top” of the
`metallized layer ........................................................................................................... 27
`4. Kuwahara teaches away from the presence of a copolymer resin between the metal
`islands ............................... -.......................................................................................... 30
`5. A person having ordinary skill in the art would not know whether the copolymer resin
`would flow around the island metal structures ........................................................... 32
`C. Having Failed to‘ Establish that Kuwahara Inherently Anticipates Claim 1, All of the
`Proposed Grounds of Rejection Must Be Withdrawn....................................................... 33
`
`V. CONCLUSION ....................................................................................................................... 35
`
`ii
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`

`

`TABLE OF AUTHORITIES
`
`Case IPR2013—00149
`
`Patent No. 6,455,138
`
`Page(s)
`
`Cases
`
`Akamai Teons, Inc. v. Cable & Wireless Internet Serv., Inc ........................................................ 16
`Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) .................... 16
`Electro Med. Sys, SA. v. Cooper Life Sci, Inc., 34 F.3d 1048, 1052 (Fed. Cir. 1994) ............... 17
`Ex parte Levy, 17 USPQ2d 1461, 1464 (Ed. Pat. App. & Inter. 1990) ........................................ 16
`Finnigan Corp. v. Int'l Trade Comm’n, 180 F.3d 1354, 1366 (Fed. Cir. 1999) ............................ 17
`Glaxo, Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047-48 (Fed. Cir. 1995) .................................... 17
`In re Oelrich, 666 F.2d 578, 581 (C.C.P.A. 1981) ........................................................................ 16
`In re Oleich, 666 F.2d 578, 581—82 (CCPA 1981) ...................................................................... 15
`In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) ..................................................................... 14
`In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) ................................................................... 15
`MEHL/Biophile, 192 F.3d at 1365 ................................................................................................ 17
`Metabolite Labs, Inc. v. Lab. Corp. ofAm. Holdings, 370 F.3d 1354, 1367 (Fed. Cir. 2004)
`15
`Rosco Inc. 11. Mirror Lite Co.,304 F.3d 1373, 1379-81 (Fed. Cir. 2002) ...................................... 18
`Rosco, 304 F.3d at 1380—81 .......................................................................................................... 19
`Scalteclz, Inc. v. Retec/Tetra, L.L.C., 178 F.3d 1378, 1384 (Fed. Cir. 1999) ............................... 16
`Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1335 (Fed. Cir. 2002) .............................. 18
`Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1328 (Fed. Cir. 2001) ............... 18
`Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002) ................. 16
`Trintec Indus, Inc. v. Top-U;S.A. Corp, 295 F.3d 1292, 1297 (Fed. Cir. 2002) ......................... 17
`
`.
`Rules and Regulations
`37 C.F.R. §42.120 ........................................................................................................................... 1
`37 CPR. §42.23 ........................................................................... . ................................................. 2
`
`

`

`Case IPR2013—00149
`
`Patent No. 6,455,138
`
`I.
`
`INTRODUCTION
`
`Pursuant to 37 C.F.R. §42. 120, Patent Owner Textron Innovations Inc.
`
`(“Textron”) submits this Patent Owner Response (“Response”) in reply to the
`
`Decision to Institute Inter Partes Review dated August 1, 2013 (“Decision”) of
`
`Murano, US. Patent No. 6,455,138 (the “’138 patent”). Textron also submits this
`
`Response to the Petition for Inter Partes Review filed February 15, 2013,
`
`(“Petition”) to the extent the Patent Trial and Appeal Board (PTAB) relied on the
`
`Petition in rendering its decision to institute.
`
`The Petitioner, Wavelock Advanced Technology Co., Ltd. (“Wavelock”) has
`
`failed to carry its burden in proving that the only document relied upon to reject the
`
`sole independent claim, Kuwahara, JP 63-28 6337 (“Kuwahara”) inherently
`
`anticipates the claims. Specifically, Wavelock has failed to prove that Kuwahara
`
`necessarily produces a discontinuous layer including discrete islands of metal in an
`
`adhesive. The entire basis for Wavelock’s position is premised on one sentence in
`
`Kuwahara, and one sentence in each of paragraphs 39 and 57 of Dr. Robert Iezzi’s
`
`declaration (the “Declaration”). Wavelock has not produced any evidence other
`
`than unsupported opinion testimony, which is legally insufficient to carry its
`
`burden in proving that the prior art necessarily will produce the claimed invention.
`
`In addition, Dr. Iezzi is forced to make assumptions regarding Kuwahara’s
`
`disclosure in rendering his conclusion that islands of Sn deposited in Kuwahara are
`
`

`

`IPR2013—00149
`
`Patent No. 6,455,138
`
`“in the adhesive.” Wavelock Exhibit 1017, 1157, pg. 26.‘ Assumptions regarding
`
`the prior art disclosure are wholly inadequate to establish inherent anticipation,
`
`which requires the alleged inherent claim limitation to be the necessary result of
`
`the prior art. A mere probability (which must result when assumptions are made)
`
`precludes inherency as a matter of law. Accordingly, the rejections of all of the
`
`claims at issue in this proceeding based on Kuwahara are legally erroneous.
`
`II. MATERIAL FACTS
`
`Petitioner did not include a statement of material facts. Textron presents the
`
`following material facts pursuant to 37 C.F.R. §42.231:
`
`l. The ‘138 patent claims all require the presence of a discontinuous
`
`layer including discrete islands of metal in an adhesive (Wavelock
`Exhibit 1001, pg. 9);
`
`2. Some of the problems the ‘138 patent seeks to minimize or overcome
`
`are delamination of metallized polymer composite, corrosion of the
`
`metal layer, and popping that can occur when solvents are used and
`
`then evaporated during processing of the composite (Id at pg. 5);
`
`1 The list is by no means exhaustive, and more material facts may be established
`during this proceeding. The list presented in Patent Owner’s response is merely
`illustrative of the important material facts for the particular issues discussed
`herein.
`
`

`

`3. Kuwahara, JP Laid—Open Application 63-286337 published
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`IPR2013—00149
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`Patent No. 6,455,138
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`November 24, 1988 (“Kuwahara” — Wavelock Exhibit 1006 and 1007
`
`(English translation))2 discloses ornamental molded articles useful for
`
`the outer casing of electronic appliances such as television sets and
`
`VTRs, in which the molded articles include a metallized layer formed
`
`in discrete islands that are separated from one another to have
`
`insulating properties and not cause electrical shocks (Wavelock
`
`Exhibit 1007, pg; 2);
`
`4. Kuwahara makes use of low melting point metals such as Sn, Pb, Zn,
`
`Bi, and the like (Id at pg. 4), where the melting point of tin is 232°C
`
`and the melting point of indium is 157°C (Declaration of Dr. Iezzi,
`
`Wavelock Exhibit 1017 at 1182, pg. 38);
`
`5. Kuwahara discloses in Examples 1 and 2 that the distance between the
`
`. metal islands is 500 Angstroms (Wavelock Exhibit 1007 at pg. 5);
`
`6. 500 Angstroms is an order of magnitude smaller than the resolution of
`
`a light microscope, as shown in “A Cellular World, PH709 The
`
`Biology of Public Health, printed from http://sph.bu.edu/otlt/l\/IPH—
`
`2 Citations to Kuwahara are citations to the English translation found in Wavelock
`Exhibit 1007 .
`
`

`

`
`Modules/PH/PH709 A Cellular World/PH709 A Cellular World printhtml —
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`IPR2013—00149
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`Patent No. 6,455,138
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`(Textron Exhibit 2001 at pg. 19);
`
`7. Kuwahara discloses2:
`
`In example 1 and example 2, a deposited Sn layer was provided in an
`
`island structure shown below on one surface of a 12 um thick
`
`elongated piece of a polyethylene terephthalate film by performing
`
`vacuum deposition under evaporation conditions shown below with a
`
`semi-continuous vacuum deposition apparatus; a vinyl chloride-vinyl
`
`acetate copolymer resin was applied to the deposited Sn layer of the
`
`examples to a thickness of 2 um with a roller coater, then heated with
`
`a 200 um thick polyvinylchloride film and laminated under pressure.
`
`The thus obtained products were slit to 10 mm width, and the slit
`
`products, with the polyvinylchloride film inwards and the
`
`polyethylene terephthalate film outwards, were adhered to a
`
`polyvinylchloride resin while being molded, so as to obtain molded
`
`articles having metal luster and insulating properties.
`
`Wavelock Exhibit 1007 at pg. 5.
`
`8. Dr. Iezzi states that the vinyl chloride—vinyl acetate copolymer resin
`
`used in Kuwahara’s examples is an adhesive, and that since “the
`
`adhesive is applied on top of the discontinuous metal layer in a liquid
`
`state, the adhesive would inherently flow around the island metal
`
`structures so that islands of metal would be in the adhesive.”
`
`(Wavelock Exhibit 17 at 1B 9, pg. 17, emphasis added).
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`

`

`IPR2013-00149
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`Patent No. 6,455,138
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`9. Dr. Iezzi further states that “[v]inyl chloride—vinyl acetate copolymer
`
`resin was a common adhesive used to adhere a metallized film to a
`
`vinyl chloride film and other plastic films.” 1d at 1157, pg. 26;
`
`lO.Dr. Iezzi concludes that “[o]ne of ordinary skill in the art would have
`
`also understood that since the adhesive (vinyl chloride-vinyl acetate
`
`copolymer resin) is applied by a coater to the Sn islands deposited on
`
`the PET film, the Sn islands are in the adhesive.” Id at ‘ll57, pg. 27;
`
`ll.Even if Dr. Iezzi’s assumption were accurate that the vinyl chloride-
`
`vinyl acetate copolymer resin of Kuwahara is a liquid, there is no
`
`evidence or proof (and the documents of record suggest the opposite)
`
`that this liquid would necessarily fill the spaces between the metal
`
`islands, especially when Kuwahara provides no characteristics of the
`
`resin (e.g., monomer percentages, molecular weight, viscosity, etc).
`
`III. THE ‘138 PATENT AND KUWAHARA
`
`Patent Owner presents a brief summary of the ‘138 patent and the only prior
`
`art cited in the Decision (Kuwahara) as disclosing the features of the only
`
`independent claim of the ‘ 138 patent. The differences between the ‘ 138 patent and
`
`Kuwahara will reveal why the allegations, assumptions, and conclusions adVanced
`
`by Petitioner Wavelock fail to prove, as a matter of necessity, that Kuwahara
`
`inherently discloses all of the features of the ‘138 patent claims.
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`

`

`IPR2013—00149
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`Patent No. 6,455,138
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`A.
`
`The ‘138 Patent
`
`The ‘138 patent discloses a metallized composite comprising a first
`
`thermoplastic layer, a discontinuous intermediate layer comprising discrete islands
`
`of metal in an adhesive, and a second thermoplastic layer. Wavelock Exhibit 1001,
`
`pg. 1. Figure 1 illustrates an embodiment of such a metallized composite.
`
`IO
`
`\I8
`
`
`
`Wavelock Exhibit 1001, pg. 2. The ‘138 patent describes this embodiment as
`
`follows:
`
`In one embodiment, shown in FIG. 1, metallized composite 10
`
`includes first thermoplastic layer 12. Discontinuous layer 14 is on first
`
`thermoplastic layer 12 and includes first side 16 and second side 18.
`
`Discontinuous layer includes discrete islands of metal 20 and adhesive
`
`22. Second thermoplastic layer 24 is on discontinuous layer 14,
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`

`

`IPR2013-00-149
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`Patent No. 6,455,13 8
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`whereby discontinuous layer 14 is between the first and second
`
`thermoplastic layers.
`
`Wavelock Exhibit 1001, pg. 6, col. 4, 11. 1-8.
`
`Some of the problems the ‘138 patent seeks to minimize or overcome are
`
`delamination of metallized composite, corrosion of the metal layer, and popping
`
`that can occur when solvents are used and then evaporated during processing of the
`
`composite material (Id at pg. 5, col. 1, 11. 10—63). Thus, the metallized composite
`
`includes discrete islands of metal in an adhesive to prevent and/or minimize
`
`corrosion of the metal layer, and to prevent and/or minimize delamination between
`
`the metal layer and the thermoplastic layers on either side (1617.).
`
`Claim 1 of the ‘138 patent, the only independent claim, recites:
`
`1. A metallized composite, comprising:
`
`a) a first thermoplastic layer;
`
`b) a discontinuous layer on said first layer, said discontinuous layer
`
`including discrete islands of metal in an adhesive; and
`
`c) a second thermoplastic layer, said discontinuous layer being
`
`between said first and second thermoplastic layers.
`
`Wavelock Exhibit 1001, pg. 9.
`
`

`

`IPR2013-00149
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`Patent No. 6,455,138
`
`B.
`
`Kuwahara
`
`Kuwahara discloses ornamental molded articles useful for the outer casing
`
`of electronic appliances such as television sets and VTRs, in which the molded
`
`articles include a metallized layer formed in discrete islands that are separated
`
`from one another so that they have insulating properties and do not cause electrical
`
`shocks (Wavelock Exhibit 1007, pg. 2). The purpose of Kuwahara’s film is to
`
`prevent shocks when used on electronic appliances, and consequently, Kuwahara
`
`avoids any potential contact between adjacent metal islands. Id at pg. 4.
`
`Kuwahara discloses that if the distance between the islands is less than 100 A,then
`
`a tunneling current flows so that the insulating characteristic degrades. Id.
`
`Kuwahara makes use of low melting point metals such as Sn, Pb, Zn, Bi, and .
`
`the like (Id at pg. 4), where the melting point of tin is 232°C and the melting point
`
`of indium is 157°C (Declaration of Dr. Iezzi, Wavelock Exhibit 1017 at 1182, pg.
`
`38). Kuwahara discloses in Examples 1 and 2 the distance between the metal
`
`islands as 500 Angstroms (Wavelock Exhibit 1007 at pg. 5). 500 Angstroms is
`
`extremely small, and would not even be visible under a conventional light
`
`microscope, as shown and described in “A Cellular World, P'H709 The Biology of
`
`
`Public Health, printed from http://sph.bu.edu/otlt/MPH—
`
`Modules/PH/PH709 A Cellular World/PH709 A Cellular World printhtml ~ (Textron Exhibit
`
`2001 at pg. 19). A figure from page 19 of this document is reproduced below:
`
`

`

`IPR2013-00149
`
`Patent No. 6,455,138
`
`{ffils
`
`mmmmxs ’
`
`étMtfiéx
`MOLEC: til, Es
`
`MQLEQ‘ULES
`
`Moms
`
`as:
`
`mimic“;
`
`Wichita a?
`k
`3"“ 5' mm”
`
`
`335me
`3:11:1th
`W
`
`ma mm
`
`To appreciate how small 500 Angstroms is, one would have to carve up a
`
`one millimeter segment into 20,000 equally-spaced segments, and just one of those
`
`segments represents 500 Angstroms. The following hyphen is about one
`millimeter long ( - ), which means 500 Angstroms would be 1/20,000th the size of
`
`the hyphen. The figure aboveshows that macro—molecules like polymers, are
`
`hundreds of Angstroms in size, which likely depends on the molecular weight and
`
`number of repeating units. It is highly likely, and at the very least possible, that the
`
`

`

`copolymer resin used by Kuwahara is larger than the 500 Angstrom space between
`
`the metal islands and would not fit in the space unless modified.3
`
`IPR2013-00149
`
`Patent No. 6,455,138
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`Kuwahara’s example discloses, in examples 1 and 2:
`
`In example 1 and example 2, a deposited Sn layer was provided in an
`
`island structure shown below on one surface of a 12 um thick
`
`elongated piece of a polyethylene terephthalate film by performing
`
`vacuum deposition under evaporation conditions shown below with a
`
`semi-continuous vacuum deposition apparatus; a vinyl chloride—vinyl
`
`acetate copolymer resin was applied to the deposited Sn layer of the
`
`examples to a thickness of 2 um with a roller coater, then heated with
`
`a 200 mm thick polyvinylchloride film and laminated under pressure.
`
`The thus obtained products were slit to 10 mm width, and the slit
`
`products, with the polyvinylchloride film inwards and the
`polyethylene terephthalate film outwards, were adhered to a
`
`polyvinylchloride resin while being molded, so as to obtain molded
`
`articles having metal luster and insulating properties.
`
`Wavelock Exhibit 1007 at pg. 5. The most likely result from carrying out this
`
`example is not the illustration provided in Dr. Iezzi’s Declaration and relied upon
`
`in the Decision, but rather the film would have the following structure.
`
`
`
`3 One will never know the true answer, however, because Kuwahara does not
`disclose the molecular weight of the copolymer resin, and Wavelock has
`provided no evidence that the copolymer resin could fit in such a small space.
`
`10
`
`

`

`
`
`
`
`
`Sn islands 500 A
`
`IPR2013-00149
`
`Patent No. 6,455,138
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`
`
`It is possible to interpret Kuwahara’s example as disclosing roll coating the
`
`copolymer resin in a highly viscous state in which the resin is applied “to” the
`
`upper surface of the metallized layer while the layer is upside down, which is
`
`conventional in roll coating (see illustration below) 4:
`
`
`
`
`
`
`
`Mmafimgladg =
`;
`_- ”
`-
`»
`........................
`,
`
`
`The metallized layer of Kuwahara
`would be on the bottom and the
`
`
`resin would be applied to the
`bottom of the layer.
`
`FIG} wwaifielng >-
`
`Kuwahara then discloses heating the film, apparently to cure or set the adhesive
`
`and if an solvent were used,5 to evaporate the solvent, and laminatin the film
`Y
`g
`
`4 See Textron Exhibit 2002, “About Roll Coaters,” excerpted from the Schaefer
`Company website: http://www.schaeferco.com/about_rollcoaters.html.
`
`5 Kuwahara does not disclose applying the copolymer resin dissolved in a solvent.
`Rather, this would have to be an assumption made based on Kuwahara’s
`disclosure. It is equally plausible that the copolymer resin is a solid, and is
`
`11
`
`

`

`IPR2013-00149
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`Patent No. 6,455,138
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`with a 200 um thick PVC film. Kuwahara again does not disclose the temperature
`
`at which the materials are heated, or the lamination pressure.
`
`Even if a low viscosity solution of the copolymer resin were applied to the
`
`surface of Kuwahara’s metal islands, and even if they were applied on top of the
`
`metal islands, very little if any could possibly fill in the 500 Angstrom sized
`
`spaces. If Kuwahara’s metal islands were coated with a highly viscous copolymer
`
`resin using conventional roller coating configurations (e.g., with the surface to be
`
`coated upside down so that the “bottom” would be coated), it is even more unlikely
`
`that any of the resin would fill the 500 Angstrom-sized spaces between the metal
`
`islands. Wavelock therefore has failed to carry its burden-in proving that
`
`Kuwahara’s examples would necessarily (i.e., without any probability) produce the
`
`claimed film.
`
`IV.
`
`THE BOARD SHOULD FIND THAT CLAIMS 1-3, 8, 10, 16-19, 21, 25—
`33, 35, AND 36 ARE PATENTABLE IN VIEW OF WAVELOCK’S
`CHALLENGE
`‘
`
`The only prior art cited against claim 1 in the Decision is Kuwahara, and the
`
`Decision alleges that the examples of Kuwahara inherently produce the claimed
`
`discontinuous layer. The only evidence to support this allegation is unsupported
`
`coated as a solid, or is heated and coated as a highly viscous 100% solid resin
`film.
`
`12
`
`

`

`IPR2013—00149
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`Patent No. 6,455,138
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`opinion testimony by Dr. Iezzi that is premised on assumptions that are not
`
`necessarily consistent with Kuwahara’s disclosure. Wavelock has not provided
`
`any other evidence to support inherency — a doctrine that requires the inherent
`
`element (in this case, the formation of a discontinuous layer) to necessarily occur,
`
`where possibilities, assumptions, and probabilities are inadequate.
`
`The entire basis upon which Wavelock’s anticipation rejection is premised
`
`stems from one sentence in Kuwahara, and one sentence in Dr. Iezzi’s declaration.
`
`The sentence of Kuwahara states “a vinyl chloride-vinyl acetate copolymer resin
`
`was applied to the deposited Sn layer of the examples to a thickness of 2 um with a
`
`roller coater, then heated with a 200 um thick polyvinylchloride film and laminated
`
`under pressure.” Dr. Iezzi stretches this disclosure and assumes that the copolymer
`
`resin first is a liquid, then that the liquid was applied to the top of the layer
`
`(insinuating a configuration in which the resin is vertically on top of the metallized
`
`layer), and then that the liquid would inherently flow around the island metal
`
`structures sothat islands of metal would be in the adhesive. No other evidence
`
`exists.
`
`The evidence is inadequate to establish inherency, especially when it is
`
`premised on assumptions and a belief as to what might result. Inherency requires
`
`necessity — probabilities are insufficient. The most reasonable interpretation of
`
`13
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`

`

`IPR2013—00149
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`Patent No. 6,455,138
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`Kuwahara is that no resin (or very little if any) would flow around the island metal
`
`structures since roller coating typically applies a highly viscous adhesive to an
`
`upside down film, which then is heated to form a thin film of adhesive. Rather,
`
`certain conditions would have to exist for even some small portion of the resin to
`
`flow around the metal islands — conditions that are neither disclosed nor suggested
`
`in Kuwahara. Even if a person having ordinary skill in the art “could” modify the
`
`coating and laminating conditions to force some resin into the 500 Angstrom
`
`spaces between the metal islands, there is no evidence of record to establish what
`
`those conditions might be, nor does Kuwahara disclose any reason to do so. In
`
`fact, Kuwahara requires no contact between the metal islands, and the presence of
`
`a material between each metal island might permit tunneling current flow, which
`
`Kuwahara expressly avoids (Wavelock Exhibit 1007, pg. 4).6
`
`A.
`
`Inherency Requires the Inherent Element to Necessarily Result
`and Cannot be Based on Probabilities
`
`The fact that a certain result or characteristic may occur or be present in the
`
`prior art is not sufficient to establish the inherency of that result or characteristic.
`
`In re Rz’jckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) (reversed rejection because
`
`
`
`6 This is especially true if a solvent were used to dissolve the resin, since residual
`solvent would remain in the spaces. As is the case with most solvents like water
`and alcohols, that solvent would likely permit electricity to flow between the
`metal islands. This would completely destroy the entire purpose of Kuwahara.
`
`14
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`

`

`IPR2013-00149
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`Patent No. 6,455,138
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`inherency was based on what would result due to optimization of conditions, not
`
`what was necessarily present in the prior art); In re Oelrich, 666 F.2d 578, 581-82
`
`(CCPA 1981). “To establish inherenCy, the extrinsic evidence ‘must make clear
`
`that the missing descriptive matter is necessarily present in the thing described in
`
`the reference, and that it would be so recognized by persons of ordinary skill. I
`
`Inherency, however, may not be established by probabilities or possibilities. The
`
`mere fact that a certain thing may result from a given set of circumstances is not .
`
`sufficient.’ ” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted)
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`(The claims were drawn to a disposable diaper having three fastening elements.
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`The reference disclosed two fastening elements that could perform the same
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`function as the three fastening elements in the claims. The court construed the
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`claims to require three separate elements and held that the reference did not
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`disclose a separate third fastening element, either expressly or inherently).
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`Moreover, “[a]n invitation to investigate is not an inherent disclosure” where a
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`prior art reference “discloses no more than a broad genus of potential applications
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`of its discoveries.” Metabolite Labs, Inc. 12. Lab. Corp. ofAm. Holdings, 370 F.3d
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`1354, 1367 (Fed. Cir. 2004).
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`“In relying upon the theory of inherency, the examiner must provide a basis
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`in fact and/or technical reasoning to reasonably support the determination that the
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`allegedly inherent characteristic necessarily flows from the teachings of the applied
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`prior art.” Exparte Levy, 17 USPQ2d 1461, 1464 (Ed. Pat. App. & Inter. 1990).
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`The Federal Circuit explained the standard for determining inherency as follows:
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`IPR2013—00149
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`Patent No. 6,455,138
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`lnherency, however, may not be established by probabilities or
`possibilities. The mere fact that a certain thing may result from a
`given set of circumstances is not sufficient. If, however, the disclosure
`is sufficient to show that the natural result flowing from the operation
`as taught would result in the performance of the questioned function,
`it seems to be well settled that the disclosure should be regarded as
`sufficient.
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`Continental Can Co. USA v. Monsanto C0,, 948 F.2d 1264, 1269 (Fed. Cir. 1991)
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`(quoting In re Oelrich, 666 F.2d 578, 581 (C.C.P.A. 1981); accord Akamai Techs.,
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`Inc. v. Cable & Wireless Internet Serv., Inc., 344 F.3d 1186, 1192 (Fed. Cir. 2003)
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`("A claim limitation is inherent in the prior art if it is necessarily present in the
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`prior art, not merely probably or possibly present"); Transclean Corp. v.
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`Bridgewooa’ Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002) ("Because
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`anticipation by inherent disclosure is appropriate only when the reference discloses
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`prior art that must necessarily include the unstated limitation, the Japanese patent
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`cannot inherently anticipate the claims of the '080 patent") (emphasis in original);
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`Scaltech, Inc. v. Retec/Tetra, L.L.C., 178 F.3d 1378, 1384 (Fed. Cir. 1999)
`
`("lnherency may not be established by probabilities or possibilities. The mere fact
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`that a certain thing may result from a given set of circumstances is not sufficient to
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`establish inherency. However, if the natural result flowing from the operation of
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`the process offered for sale would necessarily result in achievement of each of the
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`IPR2013—00149
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`Patent No. 6,455,13 8
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`claim limitations, the claimed invention was offered for sale"), appeal after
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`remand, 269 F.3d 1321, 1330-31 (Fed. Cir. 2001); Finnigan Corp. v. Int'l Trade
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`Comm ’n, 180 F.3d 1354, 1366 (Fed. Cir. 1999) (reversing finding of anticipation
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`because testimony demonstrated that it was only a possibility that claimed
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`nonresonance ejection was disclosed in reference and stating "The mere possibility
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`that Figure 2 might be understood by one of skill in the art to disclose
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`nonresonance ejection is insufficient to show that it is inherently disclosed
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`therein. ").
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`Thus, "[o]ccasiona1 results are not inherent.""7 A challenger can use
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`evidence extrinsic to the prior-art reference to show that the missing item is
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`7 MEHL/Biophz'le, 192 F.3d at 1365; accord Trim‘ec Indus., Inc. v. Top—U.S.A.
`Corp, 295 F.3d 1292, 1297 (Fed. Cir. 2002) (vacating summary judgment of
`anticipation by inherency since record evidence did not show prior art inherently
`“created" the image in a computer, as required by the claim, but may have
`"created" the image manually and then provided it to the computer for further
`processing, and stating "It is irrelevant that a skilled artisan might possibly use the
`computer to create the final desired image from the color separations. Inherency
`does not embrace probabilities or possibilities"); Glaxo, Inc. v. Novopharm Ltd.,
`52 F.3d 1043, 1047-48 (Fed. Cir. 1995) (stating that claimed invention was not
`anticipated by inherency in example of reference where it was shown that the
`allegedly inherent compound was not produced every time when following the
`teachings of the reference even though validity challenger’s expert performed prior
`art example thirteen times and obtained claimed material); Electra Med. Sys, S.A.
`v. Cooper Life Sci, Inc, 34 F.3d 1048, 1052 (Fed. Cir. 1994) ("The mere fact that
`a certain thing may result from a given set of circumstances is insufficient to prove
`anticipation").
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`lPR2013-00149
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`necessarily present.8 The challenger may not, however, use extrinsic evidence to
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`supply missing material that is not inherent from the information expressly
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`disclosed.9 For example, in Rosco Inc. v. Mirror Lite C0.,304 F.3d 1373, 1379-81
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`(Fed. Cir. 2002) the challenger argued that its design patent on a mirror inherently
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`anticipated a utility patent on a mirror that required a varying radius of curvature. I
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`The challenger argued that if it made its mirror in the shape shown in the design
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`patent and used a certain thermoforming process to make the mirror, a varying
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`radius of curvature would inevitably result. The design patent, however, provided
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`no disclosure of any process to make the mirror, and the thermoforming process
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`was not the only way to make the mirror. Hence, it was not inevitable that one of
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`skill in the art would use the thermoforming process to make the mirror. On this
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`basis, the Federal Circuit reversed a district court's finding of anticipation by
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`inherency because the disclosure in the design patent did not show that a mirror
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`with the required radius of curvature would necessarily result from using the
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`8 Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1328 (Fed. Cir.
`2001) ("[R]ecourse to extrinsic evidence is proper to determine whether a feature,
`while not explicitly discussed, is necessarily present in a reference. The evidence
`must make clear that the missing feature is necessarily present, and that it would be
`so recognized by persons of skill in the relevant art").
`9 Teleflex, Inc. v. Ficosa N. Am. Corp, 299 F.3d 1313, 1335 (Fed. Cir. 2002) ("As
`we have repeatedly stated, anticipation requires that each limitation of a claim must
`be found in a single reference. Although we have permitted the use of additional
`references to confirm the contents of the allegedly anticipating reference, we have
`made clear that anticipation does not permit an additional reference to supply a
`missing claim limitation").
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`IPR2013-00149
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`Patent No. 6,455,138
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`disclosure ofjust the design patent.10 Accordingly, while the doctrine of inherency
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`permits accounting for a prior—art reference’s implicit disclosures in an anticipation
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`analysis, it does not permit filling in missing elements just because one of skill in
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`the art might know of the missing material from some other source.
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`The Finnigcm and Rosco cases are relevant to the facts of the present case,
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`although both Finnigcm and Rosco presented closer examples of inherency than the
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`present evidence. At least in Finnigcm and Rosco, the evidence supported a
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`possibility. No such evidence exists here. Rather, the only evidence is
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`unsupported opinion testimony that is premised on assumptions that the resin is a
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`liquid, that it was applied on top of the layer (suggesting a vertical configuration),
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`and the bare allegation that the “adhesive would inherently flow around the island
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`metal structures.” Wavelock Exhibit 1017, pg. 17. Even if the evidence