`U.S. Patent No. 6,896,773
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`THE GILLETTE COMPANY, TAIWAN SEMICONDUCTOR
`MANUFACTURING COMPANY, LTD., TSMC NORTH AMERICA
`CORP., FUJITSU SEMICONDUCTOR LIMITED, and FUJITSU
`SEMICONDUCTOR AMERICA, INC.,
`
`Petitioner
`
`v.
`
`ZOND, LLC
`Patent Owner
`__________________
`
`Case IPR2014-007261
`Patent 6,896,773
`__________________
`
`
`ZOND LLC’S PATENT OWNER RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1 Case IPR2014-01481 has been joined with the instant proceeding.
`
`
`
`IPR2014-00726
`U.S. Patent No. 6,896,773
`
`TABLE OF CONTENTS
`
`I. INTRODUCTION .......................................................................................................................1
`
`II. TECHNOLOGY BACKGROUND ...........................................................................................6
`
`A.
`
`B.
`
`Overview Of Magnetron Sputtering Systems. ...............................................................6
`
`The ’773 patent: Dr. Chistyakov invents a new sputtering source containing a
`cathode containing a sputtering target, an ionization source to generate weakly
`ionized plasma, a power supply generating a voltage pulse having an
`amplitude and a rise time chosen to increase a density of ions in the strongly
`ionized plasma enough to generate sufficient thermal energy in the sputtering
`target to cause a sputtering yield to be non-linearly related to a temperature of
`the sputtering target........................................................................................................7
`
`III. SUMMARY OF THE INSTITUTED GROUNDS FOR REVIEW .......................................12
`
`IV. CLAIM CONSTRUCTION. ..................................................................................................13
`
`A.
`
`B.
`
`C.
`
`The construction of “weakly ionized plasma” and “strongly ionized plasma” ...........14
`
`The construction of “means for ionizing a feed gas to generate a weakly-
`ionized plasma” ............................................................................................................14
`
`The construction of “means for increasing the density of the weakly-ionized
`plasma” ........................................................................................................................14
`
`V. THE PETITIONER CANNOT PREVAIL ON ANY CHALLENGED CLAIM OF
`THE ’773 PATENT. ...............................................................................................................15
`
`A.
`
`The Petition failed to demonstrate that a skilled artisan would have been
`motivated to combine the teachings of the prior art references to achieve the
`claimed invention of the ’773 patent with a reasonable expectation of success
`or that combining the teachings of the prior art would have led to predictable
`results. ..........................................................................................................................16
`
`1.
`
`Scope and content of prior art. ...............................................................................19
`
`a.
`
`b.
`
`c.
`
`d.
`
`Lantsman ..........................................................................................................20
`
`Fortov ...............................................................................................................21
`
`Mozgrin ............................................................................................................22
`
`Kudryavtsev .....................................................................................................23
`
`
`
`ii
`
`
`
`IPR2014-00726
`U.S. Patent No. 6,896,773
`
`2.
`
`The Petitioner Failed To Show That It Would Have Been Obvious To
`Combine Mozgrin With Fortov, Lantsman, And/Or Kudryavtsev To
`Achieve the Claimed Invention With A Reasonable Expectation Of
`Success. ..................................................................................................................26
`
`B.
`
`The Petition fails to demonstrate how the alleged combinations teach every
`element of the challenged claims. ................................................................................37
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`The cited references do not teach “ionizing a feed gas to generate a
`weakly-ionized plasma proximate to a cathode assembly that comprises a
`sputtering target,” as recited in independent claim 21, and as similarly
`recited in independent claim 40. ............................................................................38
`
`The cited references do not teach “applying a voltage pulse to the cathode
`assembly to generate a strongly-ionized plasma from the weakly ionized
`plasma, an amplitude and a rise time of the voltage pulse being chosen so
`that ions in the strongly ionized plasma generate sufficient thermal energy
`in the sputtering target to cause a sputtering yield to be non-linearly
`related to a temperature of the sputtering target, thereby increasing a
`deposition rate of the sputtering,” as recited in independent claim 21 and
`as similarly recited in independent claim 40. .........................................................40
`
`The cited references do not teach the step of “ionizing the feed gas
`comprises exposing the feed gas to one of a static electric field, an AC
`electric field, a quasi-static electric field, a pulsed electric field, UV
`radiation, X-ray radiation, an electron beam, and an ion beam,” as recited
`in independent claim 28. ........................................................................................43
`
`The cited references do not teach the step of “diffusing the weakly-ionized
`plasma with a volume of the feed gas while ionizing the volume of the
`feed gas to create additional weakly-ionized plasma,” as recited in claim
`24............................................................................................................................44
`
`The cited references do not teach the step of “diffusing the strongly-
`ionized plasma with a volume of the feed gas while applying the voltage
`pulse to the cathode assembly to generate additional strongly-ionized
`plasma from the volume of the feed gas” as recited in claim 25. ..........................46
`
`The cited references do not teach the step of “the voltage pulse applied to
`the cathode assembly generates excited atoms in the weakly-ionized
`plasma and generates secondary electrons from the sputtering target, the
`secondary electrons ionizing the excited atoms, thereby creating the
`strongly-ionized plasma,” as recited in claim 23. ..................................................48
`
`The cited references do not teach that “the ions in the strongly-ionized
`plasma causes at least a portion of a surface layer of the sputtering target
`to evaporate,” as recited in claim 29. .....................................................................50
`
`
`
`iii
`
`
`
`IPR2014-00726
`IPR2014—00726
`U.S. Patent No. 6,896,773
`US. Patent No. 6,896,773
`VI. CONCLUSION ....................................................................................................................... 52
`VI. CONCLUSION.......................................................................................................................52
`
`
`
`
`
`iv
`iv
`
`
`
`IPR2014-00726
`U.S. Patent No. 6,896,773
`
`Exhibit List
`
`Description
`
`Exhibit
`No.
`Ex. 2004 U.S. Patent 6,398,929 to Chiang
`
`Ex. 2005 Declaration of Dr. Hartsough, Patent Owner’s expert.
`
`Ex. 2006 Sinha, Naresh, K., Control Systems, Holt, Rinehart and Winston,
`1986.
`
`Ex. 2007 Eronini Umez-Eronini, System Dynamics and Control, Brooks Cole
`Publishing Co., CA, 1999, pp. 10-13.
`
`Ex. 2008 Excerpts from Weyrick, Fundamentals of Automatic Control,
`McGraw-Hill Book Company, 1975.
`
`Ex. 2009 Excerpts from Kua, Automatic Control, Prentice Hall Inc., 1987.
`
`Ex. 2010 Transcript of deposition of Mr. DeVito, Petitioner’s expert, for the
`’773 Patent
`
`
`
`v
`
`
`
`IPR2014-00726
`U.S. Patent No. 6,896,773
`
`I. INTRODUCTION
`
` The Petitioner’s arguments hinge on fanciful misreadings of the prior
`
`art by their proffered expert, Mr. DeVito. As will be shown below, neither
`
`Mozgrin nor Fortov teaches “an amplitude and a rise time of the voltage pulse
`
`being chosen so that ions in the strongly ionized plasma generate sufficient
`
`thermal energy in the sputtering target to cause a sputtering yield to be non-
`
`linearly related to a temperature of the sputtering target, thereby increasing a
`
`deposition rate of the sputtering,” as recited in independent claim 21 of the
`
`‘773 patent. Once the Board recognizes that Mr. DeVito essentially invented
`
`some of the alleged “teachings” in Mozgrin and Fortov to suit the Petitioner’s
`
`objectives, the Board should agree to confirm the challenged claims.
`
`Mozgrin does not even mention any attempt to achieve a sputtering
`
`yield to be non-linearly related to a temperature of the sputtering target, let
`
`alone achieving this yield by choosing an amplitude or rise time of the applied
`
`voltage pulse. Rather, Mozgrin designed its voltage pulse to address an
`
`entirely issue: ionization-overheating instability.2
`
`Indeed, Petitioners’ own expert, Mr. DeVito, admitted in his deposition
`
`that Mozgrin does not disclose choosing the amplitude and rise time of a
`
`
`2 Exhibit, 1002, Mozgrin at 401, right col, ¶ 1 (emphasis added).
`
`
`
`1
`
`
`
`IPR2014-00726
`U.S. Patent No. 6,896,773
`
`voltage pulse to cause the sputtering yield to be non-linear with the target
`
`temperature:
`
`Q. You would agree with me that Mozgrin is in the Mozgrin
`
`reference is not concerned with the goal of increasing the density
`
`of ions in the strongly-ionized plasma enough to generate
`
`sufficient thermal energy in the sputtering target to cause a
`
`sputtering yield to be non-linearly related to a temperature of the
`
`sputtering target?
`
`…
`
`A. Well, that's why we bring in Fortov to use the tools that
`
`Mozgrin gives to achieve the end results.3
`
`
`
`Although Fortov mentions a non-linear relation of a sputtering yield to a
`
`temperature of the sputtering target, however, it does not make any mention of
`
`how to achieve it. That is, Fortov does not describe how to (i) choose the
`
`amplitude and rise time of the voltage pulse to (ii) increase ion density in the
`
`strongly-ionized plasma to (iii) generate sufficient target thermal energy and
`
`(iv) cause the sputtering yield to be non-linear with target temperature, as
`
`required by claim 21.
`
`Thus, Mr. DeVito’s conclusory opinions are unsupported and should be
`
`disregarded by the Board. Once the prior art is properly understood, the Board
`
`
`3 Exhibit 2010, DeVito Deposition (1.20.15), p. 31, l. 20 – p. 32, l. 11.
`
`
`
`2
`
`
`
`IPR2014-00726
`U.S. Patent No. 6,896,773
`
`will see that it is missing key claim limitations, not only choosing an amplitude
`
`and voltage pulse to cause the sputtering yield to be non-linear with target
`
`temperature, but also other limitations in the other claims of the ’773 patent as
`
`explained in detail below.4
`
`In addition to missing key limitations, the Petitioner’s obviousness
`
`rejections are all predicated on the false assumption that a skilled artisan could
`
`have achieved the invention recited in the challenged claims of the ‘773 patent
`
`by combining the teachings of Mozgrin with Fortov, Lantsman, and/or
`
`Kudryavtsev.5
`
`But these references disclose very different structures and processes. For
`
`example, Mozgrin teaches two different “[d]ischarge device configurations: (a)
`
`planar magnetron and (b) shaped-electrode configuration.”6 Mozgrin further
`
`discloses a “square voltage pulse application to the gap.”7 Lantsman makes no
`
`
`4 Infra, § V.B.
`
`5 Petition at pp. 13-60.
`
`6 Mozgrin, Ex. 1002 at Fig. 1 caption.
`
`7 Id. at p. 402, col. 2, ¶ 2.
`
`
`
`3
`
`
`
`IPR2014-00726
`U.S. Patent No. 6,896,773
`
`mention of generating strongly ionized plasma.8 Kudryavtsev teaches a fourth
`
`type of discharge device configuration in which the “discharge occurred inside
`
`a cylindrical tube of diameter 2R = 2.5 cm and the distance between the
`
`electrodes was L = 52 cm.”9 Lantsman did not describe a pulsed power
`
`supply; it instead discloses two DC power supplies: “DC power supply 10,”10
`
`and “secondary DC power supply 32.”11
`
`And the Petitioner sets forth no evidence that the structure and process
`
`of Mozgrin would have produced the particular claimed sputtering source with
`
`a voltage pulse having an amplitude and a rise time being chosen to increase a
`
`density of ions in the strongly ionized plasma enough to generate sufficient
`
`thermal energy in the sputtering target to cause a sputtering yield to be non-
`
`linearly related to a temperature of the sputtering target if it were somehow
`
`modified, for example, by the very different cylindrical structure Kudryavtsev
`
`that does not have a magnet or a structure that does not even apply an
`
`
`8 See e.g., id. at col. 4.
`
`9 Kudryavtsev, Ex. 1404 at 32, right col. ¶5.
`
`10 Lantsman, Ex. 1008 at col, 4, l. 11.
`
`11 Id. at col. 4, l. 11.
`
`
`
`4
`
`
`
`electrical pulse or generate strongly-ionized plasma, like the structure disclosed
`
`IPR2014-00726
`U.S. Patent No. 6,896,773
`
`in Lantsman.12
`
`That is, the Petitioner did not show that a “skilled artisan would have
`
`been motivated to combine the teachings of the prior art references to achieve
`
`the claimed invention, and that the skilled artisan would have had a reasonable
`
`expectation of success in doing so.”13 The Board has consistently declined to
`
`institute proposed grounds of rejections in IPR proceedings when the Petition
`
`fails to identify any objective evidence such as experimental data, tending to
`
`establish that two different structures or processes can be combined.14 Here,
`
`the Petitioner did not set forth any such objective evidence.15
`
`For these reasons as expressed more fully below, none of the claims of
`
`the ’773 patent are obvious.
`
`
`12 See e.g., Petition, pp. 14-60.
`
`13 OSRAM Sylvania, Inc. v. Am Induction Techs., Inc., 701 F.3d 698, 706 (Fed.
`
`Cir. 2012).
`
`14 Epistar, et al. v. Trustees Of Boston University, IPR2013-00298, Decision Not To
`
`Institute, Paper No. 18 (P.T.A.B. November 15, 2103).
`
`15 See e.g., Petition, pp. 14-60.
`
`
`
`5
`
`
`
`IPR2014-00726
`U.S. Patent No. 6,896,773
`
`II. TECHNOLOGY BACKGROUND
`
`A. Overview Of Magnetron Sputtering Systems.
`
`Sputtering systems generate and direct ions from plasma “to a target
`
`surface where the ions physically sputter target material atoms.”16 Then,
`
`“[T]he target material atoms ballistically flow to a substrate where they deposit
`
`as a film of target material.”17 “The plasma is replenished by electron-ion pairs
`
`formed by the collision of neutral molecules with secondary electrons
`
`generated at the target surface.”18
`
`A planar magnetron sputtering system is one type of sputtering system.19
`
`“Magnetron sputtering systems use magnetic fields that are shaped to trap and
`
`to concentrate secondary electrons, which are produced by ion bombardment
`
`of the target surface.”20 “The trapped electrons enhance the efficiency of the
`
`
`16 Ex. 1001, col. 1, ll. 9-10.
`
`17 Id. at col. 1, ll. 10-12.
`
`18Id. at col. 1, ll. 30-33.
`
`19 Id. at 1, ll. 42-43.
`
`20 Id. at col. 1, ll. 34-36.
`
`
`
`6
`
`
`
`IPR2014-00726
`U.S. Patent No. 6,896,773
`
`discharge and reduce the energy dissipated by electrons arriving at the
`
`substrate.”21
`
`But prior art planar magnetron sputtering systems experienced non-
`
`uniform erosion or wear of the target that results in poor target utilization.22
`
`“In addition, conventional magnetron sputtering systems have a relatively low
`
`deposition rate…the amount of material deposited on the substrate per unit of
`
`time”23 “The deposition rate of a sputtering process is generally proportional
`
`to the sputtering yield.”24 The sputtering yield means “the number of target
`
`atoms ejected from the target per incident particle.”25
`
`
`
`B. The ’773 patent: Dr. Chistyakov invents a new sputtering source
`containing a cathode containing a sputtering target, an ionization
`source to generate weakly ionized plasma, a power supply generating a
`voltage pulse having an amplitude and a rise time chosen to increase a
`density of ions in the strongly ionized plasma enough to generate
`
`
`21 Id. at col. 1, ll. 49-51.
`
`22 Id. at col. 2, ll. 54-63.
`
`23 Id. at col. 1, ll. 63-66.
`
`24 Id. at col. 2, ll. 57-58.
`
`25 Id. at col. 2, ll. 1-2.
`
`
`
`7
`
`
`
`IPR2014-00726
`U.S. Patent No. 6,896,773
`
`sufficient thermal energy in the sputtering target to cause a sputtering
`yield to be non-linearly related to a temperature of the sputtering target
`
`To overcome the problems of low deposition rate and sputtering yield of
`
`the prior art, Dr. Chistyakov invented a sputtering source containing (i) a
`
`cathode containing a sputtering target, (ii) an ionization source to generate
`
`weakly ionized plasma, and (iii) a power supply generating a voltage pulse
`
`having an amplitude and a rise time chosen to generate a strongly ionized
`
`plasma with an increase in the density of ions enough to generate sufficient
`
`thermal energy in the sputtering target to cause a sputtering yield to be non-
`
`linearly related to a temperature of the sputtering target, as recited in
`
`independent claims 1 and 34, and as illustrated in Fig. 5A of the ’773 patent,
`
`reproduced below:
`
`
`
`
`
`
`
`
`
`
`
`8
`
`
`
`IPR2014-00726
`U.S. Patent No. 6,896,773
`
`
`
`
`
`As illustrated by FIG. 5A, Dr. Chistyakov’s sputtering source 200 includes
`
`a pulsed power supply 234, and a cathode assembly 216 including the
`
`sputtering target 220. In one embodiment, the “cathode assembly 216 is
`
`coupled to the output 222 of the matching unit 224.”26 “The input 230 of the
`
`matching unit 224 is coupled to the first output 232 of the pulsed power supply
`
`234. The second output 236 of the pulsed power supply 234 is coupled to the
`
`anode 238.”27
`
`
`26 Id. at col. 6, ll. 39-40.
`
`27 Id. at col. 6, ll. 42-43.
`
`
`
`9
`
`
`
`IPR2014-00726
`U.S. Patent No. 6,896,773
`
`“The anode 238 is positioned so as to form a gap 244 between the anode
`
`238 and the cathode assembly 216 that is sufficient to allow current to flow
`
`through the region 245 between the anode 238 and the cathode assembly 216.
`
`In one embodiment, the width of the gap 244 is between approximately 0.3 cm
`
`and 10 cm.”28
`
`In operation, a “pre-ionizing voltage is applied between the cathode
`
`assembly 216 and the anode 238 across the feed gas 256, which forms the
`
`weakly-ionized plasma 262.”29 A magnetic field is generated to trap electrons
`
`in a particular region:
`
`[The] magnetic field tends to assist in diffusing electrons from the
`
`region 245 to the region 264. The electrons in the weakly-ionized
`
`plasma 262 are substantially trapped in the region 264 by the
`
`magnetic field 245. In one embodiment, the volume of weakly-
`
`ionized plasma 262 in the region 245 is rapidly exchanged with a
`
`fresh volume of feed gas 256.30
`
`“Next, the pulsed power supply 234 applies a high power electrical pulse
`
`across the weakly-ionized plasma 262. The high power electrical pulse
`
`
`28 Id. at col. 10, ll. 19-25.
`
`29 Id. at col. 11, ll. 62-65.
`
`30 Id. at col. 12, ll. 3-8.
`
`
`
`10
`
`
`
`IPR2014-00726
`U.S. Patent No. 6,896,773
`
`generates a strongly-ionized plasma 268 from the weakly-ionized plasma
`
`262.”31 “The strong electric field 266 causes the feed gas to experience stepwise
`
`ionization. In one embodiment, the feed gas includes a molecular gases and
`
`the strong electric field 266 increases the formation of ions that enhance the
`
`strongly-ionized plasma 268.”32
`
`The sputtering yield is monitored and the electrical pulse is adjusted so
`
`that the sputtering yield increases in a non-linear manner:
`
`After the strongly-ionized plasma 268 is formed (step 626), the
`
`sputtering yield is monitored (step 628) by known monitoring
`
`techniques. If the sputtering yield is insufficient (step 630), the
`
`power delivered to the plasma is increased (step 632). In one
`
`embodiment, increasing the magnitude of the high-power pulse
`
`applied between the cathode assembly 216 and the anode 238
`
`increases the power delivered to the plasma. In one embodiment,
`
`the power delivered to the plasma is sufficient to vaporize a surface
`
`layer of the target. This increases the sputtering yield in a
`
`substantially nonlinear fashion.33
`
`
`31 Id. at col. 13, ll. 41-44.
`
`32 Id. at col 20, ll. 34-38.
`
`33 Id. at col 1, ll. 53-63.
`
`
`
`11
`
`
`
`IPR2014-00726
`U.S. Patent No. 6,896,773
`
`In the claimed invention, the rise time and amplitude of the applied voltage
`
`pulse is chosen so that “to increase a density of ions in the strongly ionized
`
`plasma enough to generate sufficient thermal energy in the sputtering target to
`
`cause a sputtering yield to be non-linearly related to a temperature of the
`
`sputtering target.”34
`
`
`
`
`
`III. SUMMARY OF THE INSTITUTED GROUNDS FOR REVIEW
`
`For the Board’s convenience, below is a summary of the grounds
`
`instituted in this IPR proceeding:
`
`1. Claims 21, 22, 26-33, and 40: obvious under § 103(a) over the
`
`combination of Mozgrin and Fortov;
`
`2. Claims 24 and 25: obvious under § 103(a) over the combination of
`
`Mozgrin, Fortov, and Lantsman; and
`
`3. Claim 23: obvious under § 103(a) over the combination of
`
`Mozgrin, Kudryavtsev and Fortov.
`
`
`
`
`34 Id. at col. 21, ll. 19-23.
`
`
`
`12
`
`
`
`IPR2014-00726
`U.S. Patent No. 6,896,773
`
`IV. CLAIM CONSTRUCTION.
`
`Under the Board’s rules, any unexpired claim “shall be given its broadest
`
`reasonable construction in light of the specification of the patent in which it
`
`appears.”35 Under that construction, claim terms are to be given their ordinary
`
`and customary meaning as would be understood by one of ordinary skill in the
`
`art in the context of the entire patent disclosure.36 The customary meaning
`
`applies unless the specification reveals a special definition given to the claim
`
`term by the patentee, in which case the inventor’s lexicography governs.37
`
`
`35 37 C.F.R. § 42.100(b).
`
`36 Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc);
`
`Research in Motion v. Wi-Lan, Case IPR2013-00126, Paper 10 at 7 (P.T.A.B.
`
`June 20, 2013).
`
`37 See Phillips, 415 F.3d at 1316 (“[T]he specification may reveal a special
`
`definition given to a claim term by the patentee that differs from the meaning
`
`that it would otherwise possess. In such cases, the inventor’s lexicography
`
`governs.”).
`
`
`
`13
`
`
`
`IPR2014-00726
`U.S. Patent No. 6,896,773
`
`A. The construction of “weakly ionized plasma” and “strongly ionized
`plasma”
`
`The Board construed “strongly ionized plasma” as “a plasma with a
`
`relatively high peak density of ions.”38 The Board construed “weakly ionized
`
`plasma” as “a plasma with a relatively low peak density of ions.”39
`
`
`
`B.
`
` The construction of “means for ionizing a feed gas to generate a
`weakly-ionized plasma”
`
`The Board also ruled that the corresponding structure for performing the
`
`recited function —“ionizing a feed gas to generate a weakly-ionized plasma”—
`
`to be a power supply electrically connected to a cathode assembly and an
`
`anode.40
`
`
`
`C.
`
` The construction of “means for increasing the density of the weakly-
`ionized plasma”
`
`The Board “observe[d] that the recited function for this claim element is
`
`“increasing the density of the weakly-ionized plasma to generate a strongly ionized
`
`
`38 Institution Decision, Paper No. 8, p. 10.
`
`39 Id.
`
`40 Id., p. 13.
`
`
`
`14
`
`
`
`IPR2014-00726
`U.S. Patent No. 6,896,773
`
`plasma having a density of ions that generate sufficient thermal energy in the
`
`sputtering target to cause a sputtering yield to be non-linearly related to a
`
`temperature of the sputtering target.”41 The Board ruled that the corresponding
`
`structure for performing the recited “increasing” means is a cathode assembly, an
`
`anode, and a pulsed power supply electrically coupled to the cathode assembly and
`
`anode.42
`
`
`
`V. THE PETITIONER CANNOT PREVAIL ON ANY CHALLENGED
`CLAIM OF THE ’773 PATENT.
`
`Differences between the challenged claims and the prior art are critical
`
`factual inquiries for any obviousness analysis and must be explicitly set forth
`
`by the Petitioner.43 The bases for rejection under 35 U.S.C. § 103 must be
`
`made explicit.44 Thus, a Petition seeking to invalidate a patent as obvious must
`
`demonstrate that a “skilled artisan would have been motivated to combine the
`
`teachings of the prior art references to achieve the claimed invention, and that
`
`
`41 Id. at 13.
`
`42 Id. at 15.
`
`43 See Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17 (1966).
`
`44 MPEP § 2143.
`
`
`
`15
`
`
`
`IPR2014-00726
`U.S. Patent No. 6,896,773
`
`the skilled artisan would have had a reasonable expectation of success in doing
`
`so.”45 The Petition’s evidence must also address every limitation of every
`
`challenged claim.
`
`Here, the Board should confirm the challenged claims because (i) the
`
`Petition failed to demonstrate that a skilled artisan would have been motivated
`
`to combine the teachings of the prior art references to achieve the claimed
`
`invention of the ’773 patent, and that the skilled artisan would have had a
`
`reasonable expectation of success in doing so or that combining the teachings
`
`of the prior art would have led to predictable results, (ii) the Petition failed to
`
`demonstrate that the prior art teaches every element of the challenged claims;
`
`(iii) the Petition failed to demonstrate that the Mozgrin Thesis is prior art.
`
`
`
`
`
`A. The Petition failed to demonstrate that a skilled artisan would have
`been motivated to combine the teachings of the prior art references to
`achieve the claimed invention of the ’773 patent with a reasonable
`expectation of success or that combining the teachings of the prior art
`would have led to predictable results.
`
`The Petitioner cannot prevail on any of the grounds of rejection pending
`
`in this IPR because the Petitioner failed to demonstrate that any of the
`
`
`45 OSRAM Sylvania, Inc. v. Am. Induction Techs., Inc., 701 F.3d 698, 706 (Fed.
`
`Cir. 2012).
`
`
`
`16
`
`
`
`IPR2014-00726
`U.S. Patent No. 6,896,773
`
`challenged claims are obvious. Generally, a party seeking to invalidate a
`
`patent as obvious must demonstrate that a “skilled artisan would have been
`
`motivated to combine the teachings of the prior art references to achieve the
`
`claimed invention, and that the skilled artisan would have had a reasonable
`
`expectation of success in doing so.”46 This is determined at the time the
`
`invention was made.47 This temporal requirement prevents the “forbidden use
`
`of hindsight.”48 Rejections for obviousness cannot be sustained by mere
`
`
`46 See Proctor & Gamble Co. v. Teva Pharm. USA, Inc., 566 F.3d 989, 995 (Fed.
`
`Cir. 2009) (“To decide whether risedronate was obvious in light of the prior
`
`art, a court must determine whether, at the time of invention, a person having
`
`ordinary skill in the art would have had ‘reason to attempt to make the
`
`composition’ known as risedronate and ‘a reasonable expectation of success in
`
`doing so.’”) (emphasis added).
`
`47 Id.
`
`48 See Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1379 (Fed. Cir. 2012)
`
`(“Indeed, where the invention is less technologically complex, the need for
`
`Graham findings can be important to ward against falling into the forbidden
`
`use of hindsight.”).
`
`
`
`17
`
`
`
`IPR2014-00726
`U.S. Patent No. 6,896,773
`
`conclusory statements.49 “Petitioner[s] must show some reason why a person of
`
`ordinary skill in the art would have thought to combine particular available
`
`elements of knowledge, as evidenced by the prior art, to reach the claimed
`
`invention.”50 Inventions are often deemed nonobvious (and thus patentable)
`
`even when all of the claim elements are individually found in the prior art
`
`because an “invention may be a combination of old elements.”51 The
`
`motivation to combine inquiry focuses heavily on “scope and content of the
`
`
`49 See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[R]ejections on
`
`obviousness grounds cannot be sustained by mere conclusory statements;
`
`instead, there must be some articulated reasoning with some rational
`
`underpinning to support the legal conclusion of obviousness”).
`
`50 Heart Failure Technologies, LLC v. Cardiokinetix, Inc., IPR2013-00183, Paper 12
`
`at 9 (P.T.A.B. July 31, 2013) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`
`418 (2007)) (emphasis in original).
`
`51 Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1321
`
`(Fed. Cir. 2005).
`
`
`
`18
`
`
`
`prior art” and the “level of ordinary skill in the pertinent art” aspects of the
`
`Graham factors.52 The Petition did not address either factor.
`
`IPR2014-00726
`U.S. Patent No. 6,896,773
`
`
`
`1.
`
`Scope and content of prior art.
`
`Any obviousness analysis requires a consideration of the scope and
`
`content of the prior art and the differences between the prior art and the
`
`claims.53 The Petition does not offer any explanation of the scope or content of
`
`the cited references. The proposed obviousness rejections of the challenged
`
`claims pending in this IPR are based on the combinations of Mozgrin with
`
`Fortov, Lantsman, and Kudryavtsev. These references are summarized below.
`
`
`
`
`52 Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1290 (Fed. Cir. 2006) (“We
`
`further explained that the ‘motivation to combine’ requirement ‘[e]ntails
`
`consideration of both the ‘scope and content of the prior art’ and ‘level of
`
`ordinary skill in the pertinent art’ aspects