IPR2014-01022
`U.S. Patent No. 6,805,779
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
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`THE GILLETTE COMPANY
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`Petitioner
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`v.
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`ZOND, LLC
`Patent Owner
`__________________
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`Case IPR2014-01022
`Patent 6,805,779
`__________________
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`ZOND LLC’S PATENT OWNER PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`IPR2014-01022
`U.S. Patent No. 6,805,779
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`TABLE OF CONTENTS
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`I. INTRODUCTION .......................................................................................................................1
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`II. TECHNOLOGY BACKGROUND ...........................................................................................9
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`A.
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`B.
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`Overview Of Plasma Generation ...................................................................................9
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`The ’779 patent: Dr. Chistyakov invents a new plasma generating process
`comprising the steps of generating a magnetic field trapping electrons near
`ground state atoms, generating metastable atoms from the ground state atoms,
`and ionizing the metastable atoms in a multi-step ionization process. ........................11
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`C.
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`The Petitioner Mischaracterized The File History. ......................................................15
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`III. SUMMARY OF THE PETITIONER’S PROPOSED GROUNDS FOR REVIEW ..............16
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`IV. THERE IS NO REASONABLE LIKELIHOOD OF PETITIONER PREVAILING
`AS TO A CHALLENGED CLAIM OF THE ’779 PATENT. ..............................................18
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`A.
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`The Petition failed to demonstrate any motivation to combine. ..................................19
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`1.
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`Scope and content of prior art. ...............................................................................22
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`a.
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`b.
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`c.
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`d.
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`2.
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`3.
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`Mozgrin ............................................................................................................22
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`Kudravtsev .......................................................................................................24
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`Iwamura ...........................................................................................................27
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`Pinsley and Angelbeck .....................................................................................29
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`The Petitioner Fails To Show That It Would Have Been Obvious To
`Combine Either Kudryavtsev’s Cylindrical Device Without A Magnet or
`Pinsley’s Gas Laser With The Magnetron System Of Mozgrin. ...........................30
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`The Petitioner Failed To Show That It Would Have Been Obvious To
`Combine Angelbeck’s Gas Laser With The Plasma Treatment Apparatus
`Of Iwamura. ...........................................................................................................35
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`B.
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`The Petition failed to demonstrate how the alleged combinations teach every
`element of the challenged claims. ................................................................................37
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`1.
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`The combination of Mozgrin, Kudryavtsev and Pinsley does not teach
`“generating a magnetic field proximate to a volume of ground state
`molecules to substantially trap electrons proximate to the volume of
`ground state molecules,” as recited in independent claim 30 and as
`similarly recited in independent claim 40. .............................................................38
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`IPR2014-01022
`U.S. Patent No. 6,805,779
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`2.
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`3.
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`4.
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`5.
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`The combination of Mozgrin, Kudryavtsev and Pinsley does not teach
`“raising an energy of the metastable atoms so that at least a portion of the
`volume of metastable atoms is ionized,” as recited in independent claim 30
`and as similarly recited in independent claim 40. ..................................................38
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`The combination of Iwamura and Angelbeck does not teach a “generating
`a plasma with a multi-step ionization process,” as recited in independent
`claim 30 and as similarly recited in claim 40. .......................................................39
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`The combination of Iwamura and Angelbeck does not teach “generating a
`magnetic field proximate to a volume of ground state atoms to
`substantially trap electrons proximate to the volume of ground state
`atoms,” as recited in independent claim 30 and as similarly recited in
`claim 40. .................................................................................................................40
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`The combination of Iwamura and Angelbeck does not teach “raising an
`energy of the metastable atoms so that at least a portion of the volume of
`metastable atoms is ionized” as recited in independent claim 30 and as
`similarly recited in claim 40. .................................................................................41
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`C.
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`The Petition Failed to Identify Any Compelling Rationale for Adopting
`Redundant Grounds of Rejection. ................................................................................42
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`D.
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`The Petition failed to set forth a proper obviousness analysis. ....................................46
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`V. CONCLUSION ........................................................................................................................49
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`IPR2014-01022
`U.S. Patent No. 6,805,779
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`I. INTRODUCTION
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`The Board should deny the present request for inter partes review of U.S.
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`Patent No. 6,805,779 (“the ’779 patent”) because there is not a reasonable
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`likelihood that the Petitioner will prevail at trial with respect to at least one
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`claim of the ’779 patent.1
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`Indeed, there are five different and independent groups of reasons why
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`the Petitioner cannot prevail. First, the reference that is primarily relied upon
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`by the Petitioner (i.e., Mozgrin) was already considered by the Examiner and
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`overcome during the prosecution of the application that led to the issuance of
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`the ’779 patent. Indeed, Mozgrin was considered by 6 different examiners and
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`overcome during the prosecution of 9 other patents that are related to the ’779
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`patent over nearly a 10 year period.2
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`1 35 U.S.C. § 314(a).
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`2 Examiners Douglas Owens, Tung X. Le, Rodney McDonald, Wilson Lee,
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`Don Wong, and Tuyet T. Vo allowed U.S. Patents 7,147,759, 7,808,184,
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`7,811,421, 8,125,155, 6,853,142, 7,604,716, 6,896,775, 6,896,773, 6,805,779,
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`and 6,806,652 over Mozgrin and Wang over nearly a decade from the time
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`that the application for the ‘759 patent was filed on 9/30/2002 to the time that
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`the ‘155 patent issued on 2/28/2012.
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`IPR2014-01022
`U.S. Patent No. 6,805,779
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`Second, the Petitioner’s obviousness rejections are all predicated on the
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`false assumption that a skilled artisan could have achieved the combination of
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`(i) generating a magnetic field proximate to a volume of ground state atoms to
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`substantially trap electrons proximate to the volume of ground state atoms; (ii)
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`generating a volume of metastable atoms from the volume of ground state
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`atoms; and (iii) raising an energy of the metastable atoms so that some of the
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`metastable atoms are ionized, thereby generating a plasma with a multi-step
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`ionization process, as required by independent claims 30 and 40 of the ’779
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`patent by combining the teachings of Mozgrin with Kudryavtsev and Pinsley.3
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`But these three references disclose very different structures and
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`processes. Mozgrin teaches two different “[d]ischarge device configurations:
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`(a) planar magnetron and (b) shaped-electrode configuration.”4 Mozgrin
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`further discloses a “square voltage pulse application to the gap.”5 Kudryavtsev
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`teaches a third type of discharge device configuration in which the “discharge
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`occurred inside a cylindrical tube of diameter 2R = 2.5 cm and the distance
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`between the electrodes was L = 52 cm.” Kudryavtsev’s system does not even
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`3 Petition at pp. 18-40.
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`4 Mozgrin, Ex. 1003 at Fig. 1 caption.
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`5 Id. at p. 402, col. 2, ¶ 2.
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`IPR2014-01022
`U.S. Patent No. 6,805,779
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`have a magnet. Pinsley discloses a fourth type of device: “[A] flowing gas
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`laser having an electric discharge plasma.”6
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`And the Petitioner sets forth no evidence that the structure and process
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`of Mozgrin would produce the particular plasma generation process of (i)
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`generating a magnetic field proximate to a volume of ground state atoms to
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`substantially trap electrons proximate to the volume of ground state atoms; (ii)
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`generating a volume of metastable atoms from the volume of ground state
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`atoms; and (iii) raising an energy of the metastable atoms so that some of the
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`metastable atoms are ionized, thereby generating a plasma with a multi-step
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`ionization process, as required by independent claims 30 and 40 of the ’779
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`patent if Mozgrin were somehow modified by a cylindrical structure that does
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`not even have a magnet, like the structure disclosed in Kudryavtsev or a
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`structure that uses a laser to generate light like Pinsley.7 Indeed, a laser emits
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`light with the release of energy when electrons in atoms move to a lower
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`energy state. Because higher energy atoms in Pinsley’s laser are used to make
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`light, they would not be available for the sputtering process of Mozgrin.
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`6 Ex. 1005, Pinsley, Abstract.
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`7 See e.g., Petition, pp. 18-40.
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`IPR2014-01022
`U.S. Patent No. 6,805,779
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`That is, the Petitioner did not show that a “skilled artisan would have
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`been motivated to combine the teachings of the prior art references to achieve
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`the claimed invention, and that the skilled artisan would have had a reasonable
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`expectation of success in doing so.”8 The Board has consistently declined to
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`institute proposed grounds of rejections in IPR proceedings when the Petition
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`fails to identify any objective evidence such as experimental data, tending to
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`establish that two different processes can be combined.9 Here, the Petitioner
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`did not set forth any such objective evidence.10 For this additional reason,
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`there is not a reasonable likelihood that the Petitioner will prevail at trial with
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`respect to at least one claim of the ’779 patent.
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`Third, the prior art in each of the Petitioner’s proposed grounds of
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`rejections are missing one or more limitations recited in the claims of the ‘779
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`patent such as (i) generating a magnetic field proximate to a volume of ground
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`state atoms to substantially trap electrons proximate to the volume of ground
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`8 OSRAM Sylvania, Inc. v. Am Induction Techs., Inc., 701 F.3d 698, 706 (Fed. Cir.
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`2012).
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`9 Epistar, et al. v. Trustees Of Boston University, IPR2013-00298, Decision Not To
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`Institute, Paper No. 18 (P.T.A.B. November 15, 2103).
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`10 See e.g., Petition, pp. 14-60.
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`IPR2014-01022
`U.S. Patent No. 6,805,779
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`state atoms; and (ii) generating a volume of metastable atoms and raising an
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`energy of the metastable atoms to thereby generate a plasma with a multi-step
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`ionization process.
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`Fourth, the Petitioner neglected to follow the legal framework for an
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`obviousness analysis set forth long ago by the Supreme Court. 11 That
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`framework requires consideration of the following factors: (1) the scope and
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`content of the prior art, (2) any differences between the claimed subject matter
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`and the prior art, and (3) the level of skill in the art. The Board has previously
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`warned that failure to identify differences between the cited art and the claims
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`is a basis for denying a petition:
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`A petitioner who does not state the differences between
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`a challenged claim and the prior art, and relies instead on the
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`Patent Owner and the Board to determine those differences based
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`on the rest of the submission in the petition risks having the
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`11 Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966); see
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`also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 399 (2007) (“While the sequence
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`of these questions might be reordered in any particular case, the [Graham]
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`factors define the controlling inquiry.”)
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`IPR2014-01022
`U.S. Patent No. 6,805,779
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`corresponding ground of obviousness not included for trial for
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`failing to adequately state a claim for relief. 12
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`The Petitioner ignored the Board’s warning by failing to identify the
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`differences between the challenged claim and the prior art. That is, the
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`Petitioner failed to identify the claim limitations that it believed are missing
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`from the primary references (i.e., Mozgrin and Iwamura) and are instead
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`taught by the secondary references (i.e., Kudryavtsev, Pinsley, and
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`Angelbeck).13 Rather, Petitioner argued that the claim limitations are taught
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`by the combinations of references, leaving the Board to figure out whether the
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`primary or secondary reference teaches the claim limitation.14 Under this
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`circumstance, it would be “inappropriate for the Board to take the side of the
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`Petitioner to salvage an inadequately expressed ground …”15 On this
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`additional basis, inter partes review should be denied.
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`Fifth, the Petition contains many redundant grounds of rejection.
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`Indeed, the Petitioner proposed two or more grounds of rejections for every
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`12 Liberty Mutual v. Progressive Casualty, CBM-2012-00003, paper 7 at 2 – 3.
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`13 See e.g., Petition, pp. 31, 33, 36, 37, and 55.
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`14 Id.
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`15 Liberty Mutual v. Progressive Casualty, CBM-2012-00003, paper 8 at 14.
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`IPR2014-01022
`U.S. Patent No. 6,805,779
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`challenged claim and did not set forth a compelling reason for why the Board
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`should institute this proceeding on multiple, redundant grounds.16
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`In brief, the Petitioner failed to demonstrate that there is a reasonable
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`likelihood that it will prevail with respect to at least one of the claims
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`challenged in the petition for the five groups of reasons summarized in the
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`table below:
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`Grounds
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`I
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`Reasons For Not Instituting a Proceeding
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`The reference that is primarily relied upon by the
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`Petitioner (i.e., Mozgrin) was already considered by
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`the Examiner and overcome during the prosecution
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`of the application that led to the issuance of the ’779
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`patent.
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`All
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`The Petitioner failed to show that a skilled artisan
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`would have had a reasonable chance of success of
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`achieving the claimed plasma generator containing
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`process, (i) generating a magnetic field proximate to
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`a volume of ground state atoms to substantially trap
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`electrons proximate to the volume of ground state
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`atoms; (ii) generating a volume of metastable atoms
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`from the volume of ground state atoms; and (iii)
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`raising an energy of the metastable atoms so that
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`16 Petition, pp. 19-60.
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`IPR2014-01022
`U.S. Patent No. 6,805,779
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`some of the metastable atoms are ionized, thereby
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`generating a plasma with a multi-step ionization
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`process as required by independent claims 30 and 40
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`of the ’779 patent by modifying Mozgrin’s planar
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`magnetron with closely spaced electrodes by a
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`cylindrical structure that does not even have a
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`magnet like the structure disclosed in Kudryavtsev
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`or a laser structure that makes no mention of
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`excited atoms like Pinsley.
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`All
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`The prior art, either alone or in combination, would
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`not have taught all the claim limitations of
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`independent claims 30 and 40 to a skilled artisan at
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`the time of the invention.
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`All
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`The Petitioner failed to identify differences between
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`the primary references (i.e., Mozgrin and Iwamura)
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`and the claimed invention in the proposed
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`obviousness rejections.
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`Grounds I, II, and III or
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`Grounds I, II, and III using Mozgrin as a primary
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`IV, V, and VI
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`reference are redundant with Grounds IV, V, and VI
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`using Iwamura as a primary reference and
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`Petitioner did not set forth a compelling reason for
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`why the Board should institute this proceeding on
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`multiple, redundant grounds.
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`For these reasons as expressed more fully below, the Board should deny the
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`Petition.
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`IPR2014-01022
`U.S. Patent No. 6,805,779
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`
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`II. TECHNOLOGY BACKGROUND
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`A. Overview Of Plasma Generation
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`“A plasma is a collection of charged particles that move in random
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`directions.”17 “For example, a plasma can be generated by applying a
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`potential of several kilovolts between two parallel conducting electrodes in an
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`inert gas atmosphere (e.g., argon) at a pressure that is between about 10-1 and
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`10-2 Torr.”18 Plasma is generated for use in sputtering systems, which deposit
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`films on substrates:
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`Ions, such as argon ions, are generated and are then drawn out of
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`the plasma and accelerated across a cathode dark space. The target
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`surface has a lower potential than the region in which the plasma
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`is formed. Therefore, the target surface attracts positive ions.
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`Positive ions move towards the target with a high velocity and
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`then impact the target and cause atoms to physically dislodge or
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`sputter from the target surface. The sputtered atoms then
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`propagate to a substrate or other work piece where they deposit a
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`film of sputtered target material.19
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`17Exhibit 1201, ‘779 patent col. 1, ll. 7-9.
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`18 Id. at col. 1, ll. 14-16.
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`19 Id. col. 1, ll. 30-42.
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`Magnets can be used in sputtering systems to increase the deposition rate:
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`IPR2014-01022
`U.S. Patent No. 6,805,779
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`Magnetron sputtering systems use magnetic fields that are shaped
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`to trap and concentrate secondary electrons proximate to the target
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`surface. The magnetic fields increase the density of electrons and,
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`therefore, increase the plasma density in a region that is proximate
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`to the target surface. The increased plasma density increases the
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`sputter deposition rate.20
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`These magnetron sputtering systems, however, have “undesirable non-
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`uniform erosion of target material.”21 To address these problems, researchers
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`increased the applied power and later pulsed the applied power.22 But
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`increasing the power increased “the probability of establishing an electrical
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`breakdown condition leading to an undesirable electrical discharge (an
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`electrical arc) in the chamber.”23 And “very large power pulses can still result
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`in undesirable electrical discharges and undesirable target heating regardless of
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`their duration.”24
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`20 Id. at col. 1, ll. 50-57.
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`21 Id. at col. 4, ll. 64-65.
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`22 Id. at col. 4, ll. 3-20.
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`23 Id. at col. 4, ll. 7-9.
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`24 Id. at col. 4, ll. 18-20.
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`IPR2014-01022
`U.S. Patent No. 6,805,779
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`B. The ’779 patent: Dr. Chistyakov invents a new plasma generating
`process comprising the steps of generating a magnetic field trapping
`electrons near ground state atoms, generating metastable atoms from
`the ground state atoms, and ionizing the metastable atoms in a multi-
`step ionization process.
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`To overcome the problems of the prior art, Dr. Chistyakov invented a
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`plasma generating process comprising the steps of: (i) generating a magnetic
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`field proximate to a volume of ground state atoms to substantially trap
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`electrons proximate to the volume of ground state atoms; (ii) generating a
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`volume of metastable atoms from the volume of ground state atoms; and (iii)
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`raising an energy of the metastable atoms so that some of the metastable atoms
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`are ionized, thereby generating a plasma with a multi-step ionization process
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`as recited in independent claims 30 and 40 and as illustrated in Fig. 2 of the
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`’779 patent, reproduced below:
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`11
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`IPR2014-01022
`U.S. Patent No. 6,805,779
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`As illustrated by FIG. 2, Dr. Chistyakov’s plasma generation apparatus
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`includes “an excited atom source that generates excited atoms from ground
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`state atoms from a feed gas source 206.”25 In one embodiment, “the excited
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`25 Id. at col. 4, ll. 30-31.
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`12
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`IPR2014-01022
`U.S. Patent No. 6,805,779
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`atom source is a metastable atom source 204.”26 “The feed gas source 206
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`provides a volume of ground state atoms 208 to the metastable atom source
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`204.”27 “The plasma generator of the present invention can use any type of
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`metastable atom source 204. Skilled artisans will appreciate that there are
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`many methods of exciting ground state atoms 208 to a metastable state.”28
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`Dr. Chistyakov’s plasma generation apparatus then moves the excited or
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`metastable atoms toward a chamber:
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`The plasma chamber 230 confines the volume of metastable atoms
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`218. In one embodiment, the output of the metastable atom source
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`204 is positioned so as to direct the volume of metastable atoms
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`218 towards the cathode assembly 114. In one embodiment, the
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`geometry of the plasma chamber 230 and the cathode assembly
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`114 is chosen so that the metastable atoms reach the cathode
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`assembly 114 at a time that is much less than an average transition
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`time of the metastable atoms to ground state atoms.29
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`The plasma generator also includes a magnet to increase the plasma density
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`near the cathode:
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`26 Id. at col. 4, ll. 31-34.
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`27 Id. at col. 4, ll. 34-36.
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`28 Id. at col. 5, ll. 1-5.
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`29 Id. at col. 6, ll. 48-56.
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`IPR2014-01022
`U.S. Patent No. 6,805,779
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`In one embodiment, a magnet (not shown) is disposed proximate
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`to the cathode assembly 114. The magnet generates a magnetic
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`field that traps electrons in the plasma proximate to the cathode
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`assembly 114 and, therefore, increases the plasma density. In the
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`region proximate to the cathode assembly 114.30
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`“The plasma generator 200 of FIG. 2 uses a multi-step or stepwise
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`ionization process to generate the plasma 202.”31 A “multi-step ionization
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`process according to the present invention includes a first step where atoms are
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`excited from a ground state to an excited state and a second step where atoms
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`in the excited state are ionized.”32
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`Dr. Chistyakov’s “multi-step ionization process … substantially
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`increases the rate at which the plasma 202 is formed and therefore, generates a
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`relatively dense plasma.”33 “Once a plasma having the desired characteristics
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`is generated, the plasma 202 can be used in the processing of the workpiece
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`138. … In a plasma sputtering application, ions in the plasma can be used to
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`30 Id. at col. 6, ll. 34-39.
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`31 Id. at col. 6, ll. 60-61.
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`32 Id. at col. 7, ll. 4-7.
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`33 Id. at col. 8, ll. 65-67.
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`IPR2014-01022
`U.S. Patent No. 6,805,779
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`sputter material from the target 116. The sputtered material is deposited on the
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`workpiece 138 to form a thin film.”34
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`Thus, Dr. Chistyakov accomplished his breakthrough of improved
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`plasma generation by inventing a particular plasma generating process
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`comprising the steps of: (i) generating a magnetic field proximate to a volume
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`of ground state atoms to substantially trap electrons proximate to the volume
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`of ground state atoms; (ii) generating a volume of metastable atoms from the
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`volume of ground state atoms; and (iii) raising an energy of the metastable
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`atoms so that some of the metastable atoms are ionized, thereby generating a
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`plasma with a multi-step ionization process.
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`C. The Petitioner Mischaracterized The File History.
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`The Petitioner alleged that the claims of the ’779 patent were allowed
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`solely because the Applicant (i.e., now the Patent Owner) “amended the
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`independent claims at issue here to require that the distinct source further
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`includes ‘generating a magnetic field proximate to a volume of ground state
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`atoms [molecules] to substantially trap electrons proximate to the ground state
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`atoms [molecules].’”35
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`34 Id. at col. 9, ll. 42-50.
`35 Petition, p. 10 (citing Ex. 1209, 05/06/04 Resp. at 2, 4, 6, 8 and 10).
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`IPR2014-01022
`U.S. Patent No. 6,805,779
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`But this allegation is not true because the Applicant amended the claims
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`at the suggestion of the Examiner to include the limitations from a dependent
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`claim, as applicants frequently do.36 That is, the independent claims were
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`allowed because of all the steps recited within them (e.g., generating a volume
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`of metastable atoms from the volume of ground state atoms; and raising an
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`energy of the metastable atoms so that some of the metastable atoms are
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`ionized, thereby generating a plasma with a multi-step ionization process) and
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`not solely because of one of the claim amendments made prior to allowance of
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`the patent.
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`III. SUMMARY OF THE PETITIONER’S PROPOSED GROUNDS FOR
`REVIEW
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`Confusingly, the Petition contains multiple, redundant grounds of
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`rejection based on the various combinations of references. In particular, for
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`every ground of rejection using the combination of Mozgrin, Kudryavtsev and
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`Pinsley, there is a corresponding redundant ground using the combination of
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`Iwamura and Angelbeck.37 That is, each and every challenged claim in the
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`36 Id. at 11.
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`37 Petition, pp. 19-60.
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`16
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`Petition is the subject of two different grounds of rejection.38 For the Board’s
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`convenience below is a summary of claim rejections proposed by the
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`IPR2014-01022
`U.S. Patent No. 6,805,779
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`Petitioner:
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`1. Ground I: Claims 30-33, 35, 37, and 40 would have been obvious
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`in view of the combination of Mozgrin, Kudryavtsev and Pinsley;
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`2. Ground II: Claims 34, and 39 would have been obvious in view of
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`the combination of Mozgrin, Kudryavtsev, Pinsley, and Wells;
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`3. Ground III: Claim 36 would have been obvious in view of the
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`combination of Mozgrin, Kudryavtsev, Pinsley, and Lovelock;
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`4. Ground IV: Claim 30-33, 35, 37, and 40 would have been obvious
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`in view of Iwamura and Angelbeck;
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`5. Ground V: Claims 34, and 39 are obvious in view of the
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`combination of Iwamura, Angelbeck, and Wells; and
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`6. Ground VI: Claim 36 would have been obvious in view of the
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`combination of Iwamura, Angelbeck and Lovelock.
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`38 Id.
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`IPR2014-01022
`U.S. Patent No. 6,805,779
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`IV. THERE IS NO REASONABLE LIKELIHOOD OF PETITIONER
`PREVAILING AS TO A CHALLENGED CLAIM OF THE ’779
`PATENT.
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`Inter partes review cannot be instituted unless the Board determines that
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`the Petition demonstrates that there is a reasonable likelihood that at least one
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`of the claims challenged in the petition is unpatentable.39 Differences between
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`the challenged claims and the prior art are critical factual inquiries for any
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`obviousness analysis and must be explicitly set forth by the Petitioner.40 The
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`bases for rejection under 35 U.S.C. § 103 must be made explicit.41 Thus, a
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`petition seeking to invalidate a patent as obvious must demonstrate that a
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`“skilled artisan would have been motivated to combine the teachings of the
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`prior art references to achieve the claimed invention, and that the skilled
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`artisan would have had a reasonable expectation of success in doing so.”42
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`The petition’s evidence must also address every limitation of every challenged
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`claim.
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`39 37 C.F.R. § 42.108(c).
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`40 See Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17 (1966).
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`41 MPEP § 2143.
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`42 OSRAM Sylvania, Inc. v. Am. Induction Techs., Inc., 701 F.3d 698, 706 (Fed.
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`Cir. 2012).
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`IPR2014-01022
`U.S. Patent No. 6,805,779
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`Here, the Board should decline to institute an inter partes review because
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`(i) the Petition failed to demonstrate any motivation to combine the asserted
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`references, (ii) the Petition failed to demonstrate that the prior art teaches every
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`element of the challenged claims, (iii) there is a substantial amount of
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`redundancy in the Petitioner’s proposed grounds of obviousness and the
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`Petitioner did not set forth a compelling reason for why the Board should
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`institute this proceeding on multiple, redundant grounds, and (iv) the Petition
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`failed to provide a proper obviousness analysis because it did not discuss the
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`differences between the claimed subject matter and the prior art.
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`A. The Petition failed to demonstrate any motivation to combine.
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`The Petitioner did not meet its statutory threshold for instituting a trial
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`with respect to any of the three grounds because the Petitioner failed to
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`demonstrate any motivation to combine. Generally, a party seeking to
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`invalidate a patent as obvious must demonstrate that a “skilled artisan would
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`have been motivated to combine the teachings of the prior art references to
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`achieve the claimed invention, and that the skilled artisan would have had a
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`IPR2014-01022
`U.S. Patent No. 6,805,779
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`reasonable expectation of success in doing so.”43 This is determined at the time
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`the invention was made.44 This temporal requirement prevents the “forbidden
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`use of hindsight.”45 Rejections for obviousness cannot be sustained by mere
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`conclusory statements.46 “Petitioner[s] must show some reason why a person of
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`43 See Proctor & Gamble Co. v. Teva Pharm. USA, Inc., 566 F.3d 989, 995 (Fed.
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`Cir. 2009) (“To decide whether risedronate was obvious in light of the prior
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`art, a court must determine whether, at the time of invention, a person having
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`ordinary skill in the art would have had ‘reason to attempt to make the
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`composition’ known as risedronate and ‘a reasonable expectation of success in
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`doing so.’”) (emphasis added).
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`44 Id.
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`45 See Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1379 (Fed. Cir. 2012)
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`(“Indeed, where the invention is less technologically complex, the need for
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`Graham findings can be important to ward against falling into the forbidden
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`use of hindsight.”).
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`46 See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[R]ejections on
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`obviousness grounds cannot be sustained by mere conclusory statements;
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`instead, there must be some articulated reasoning with some rational
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`underpinning to support the legal conclusion of obviousness”).
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`IPR2014-01022
`U.S. Patent No. 6,805,779
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`ordinary skill in the art would have thought to combine particular available
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`elements of knowledge, as evidenced by the prior art, to reach the claimed
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`invention.”47 Inventions are often deemed nonobvious (and thus patentable)
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`even when all of the claim elements are individually found in the prior art
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`because an “invention may be a combination of old elements.”48 The
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`motivation to combine inquiry f