`U.S. Patent No. 6,805,779
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`GLOBALFOUNDRIES U.S., INC.,
`GLOBALFOUNDRIES DRESDEN MODULE ONE LLC & CO. KG
`GLOBALFOUNDRIES DRESDEN MODULE TWO LLC & CO. KG
`
`Petitioner
`
`v.
`
`ZOND, LLC
`Patent Owner
`__________________
`
`Case IPR2014-01073
`Patent 6,805,779
`__________________
`
`
`
`ZOND LLC’S PATENT OWNER PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107(a)
`
`
`
`
`
`
`
`
`
`
`
`IPR2014-01073
`U.S. Patent No. 6,805,779
`
`TABLE OF CONTENTS
`
`I. INTRODUCTION .......................................................................................................................1
`
`II. TECHNOLOGY BACKGROUND ...........................................................................................9
`
`A.
`
`B.
`
`Overview Of Plasma Generation ...................................................................................9
`
`The ’779 patent: Dr. Chistyakov invents a new plasma generator containing a
`feed gas source, an excited atom source with a magnet that traps electrons, a
`plasma chamber that confines excited atoms, and an energy source that ionizes
`the confined excited atoms in a multi-step ionization process. ...................................11
`
`C.
`
`The Petitioner Mischaracterized The File History. ......................................................15
`
`III. SUMMARY OF THE PETITIONER’S PROPOSED GROUNDS FOR REVIEW ..............17
`
`IV. THERE IS NO REASONABLE LIKELIHOOD OF PETITIONER PREVAILING
`AS TO A CHALLENGED CLAIM OF THE ’779 PATENT. ..............................................18
`
`A.
`
`The Petition failed to demonstrate any motivation to combine. ..................................19
`
`1.
`
`Scope and content of prior art. ...............................................................................22
`
`a.
`
`b.
`
`c.
`
`d.
`
`2.
`
`3.
`
`Mozgrin ............................................................................................................22
`
`Kudravtsev .......................................................................................................24
`
`Iwamura ...........................................................................................................28
`
`Pinsley and Angelbeck .....................................................................................29
`
`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
`
`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
`
`B.
`
`The Petition failed to demonstrate how the alleged combinations teach every
`element of the challenged claims. ................................................................................37
`
`1.
`
`The combination of Mozgrin, Kudryavtsev and Pinsley does not teach “an
`excited atom source that receives ground state atoms from the feed gas
`source” as recited in independent claim 1 and as similarly recited in
`independent claim 18. ............................................................................................37
`
`
`
`ii
`
`
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`IPR2014-01073
`U.S. Patent No. 6,805,779
`
`The combination of Mozgrin, Kudryavtsev and Pinsley does not teach “the
`excited atom source comprising a magnet that generates a magnetic field
`for substantially trapping electrons proximate to the ground state atoms”
`as recited in independent claim 1 and as similarly recited in independent
`claim 18. .................................................................................................................39
`
`The combination of Mozgrin, Kudryavtsev and Pinsley does not teach “a
`plasma chamber that is coupled to the excited atom source, the plasma
`chamber confining a volume of excited atoms generated by the excited
`atom source” as recited in independent claim 1 and as similarly recited in
`independent claim 18. ............................................................................................39
`
`The combination of Mozgrin, Kudryavtsev and Pinsley does not teach “an
`energy source that is coupled to the volume of excited atoms confined by
`the plasma chamber” as recited in independent claim 1 and as similarly
`recited in independent claim 18. ............................................................................40
`
`The combination of Iwamura and Angelbeck does not teach a “plasma
`generator that generates a plasma with a multi-step ionization process,” as
`recited in independent claim 1 and as similarly recited in claim 18. .....................41
`
`The combination of Iwamura and Angelbeck does not teach “the excited
`atom source comprising a magnet that generates a magnetic field for
`substantially trapping electrons proximate to the ground state atoms,” as
`recited in independent claim 1 and as similarly recited in claim 18. .....................41
`
`The combination of Iwamura and Angelbeck does not teach “the energy
`source raising an energy of excited atoms in the volume of excited atoms
`so that at least a portion of the excited atoms in the volume of excited
`atoms is ionized,” as recited in independent claim 1 and as similarly
`recited in claim 18. .................................................................................................43
`
`C.
`
`The Petition Failed to Identify Any Compelling Rationale for Adopting
`Redundant Grounds of Rejection. ................................................................................44
`
`D.
`
`The Petition failed to set forth a proper obviousness analysis. ....................................48
`
`V. CONCLUSION ........................................................................................................................50
`
`
`
`iii
`
`
`
`
`
`
`
`IPR2014-01073
`U.S. Patent No. 6,805,779
`
`I. INTRODUCTION
`
`
`
`The Petitioner has represented in a motion for joinder that this petition
`
`“is identical to the Intel IPR 2014-00598 in all substantive respects, includes
`
`identical exhibits, and relies upon the same expert declarant.” Accordingly,
`
`based upon that representation, the Patent Owner opposes review on the same
`
`basis presented in opposition to Intel’s request no. IPR2014-00598, which is
`
`repeated below:
`
`The Board should deny the present request for inter partes review of U.S.
`
`Patent No. 6,805,779 (“the ’779 patent”) because there is not a reasonable
`
`likelihood that the Petitioner will prevail at trial with respect to at least one
`
`claim of the ’779 patent.1
`
`Indeed, there are five different and independent groups of reasons why
`
`the Petitioner cannot prevail. First, the reference that is primarily relied upon
`
`by the Petitioner (i.e., Mozgrin) was already considered by the Examiner and
`
`overcome during the prosecution of the application that led to the issuance of
`
`the ’779 patent. Indeed, Mozgrin was considered by 6 different examiners and
`
`
`1 35 U.S.C. § 314(a).
`
`
`
`1
`
`
`
`IPR2014-01073
`U.S. Patent No. 6,805,779
`
`overcome during the prosecution of 9 other patents that are related to the ’779
`
`patent over nearly a 10 year period.2
`
`Second, the Petitioner’s obviousness rejections are all predicated on the
`
`false assumption that a skilled artisan could have achieved the combination of
`
`(i) a feed gas source comprising ground state atoms; (ii) an excited atom source
`
`that generates excited atoms from the ground state atoms and has a magnet
`
`that traps electrons near the ground state atoms; (iii) a plasma chamber that
`
`confines excited atoms; and (iv) an energy source that ionizes the confined
`
`excited atoms in a multi-step ionization process, as required by independent
`
`claims 1 and 18 of the ’779 patent by combining the teachings of Mozgrin with
`
`Kudryavtsev and Pinsley.3
`
`
`2 Examiners Douglas Owens, Tung X. Le, Rodney McDonald, Wilson Lee,
`
`Don Wong, and Tuyet T. Vo allowed U.S. Patents 7,147,759, 7,808,184,
`
`7,811,421, 8,125,155, 6,853,142, 7,604,716, 6,896,775, 6,896,773, 6,805,779,
`
`and 6,806,652 over Mozgrin and Wang over nearly a decade from the time
`
`that the application for the ‘759 patent was filed on 9/30/2002 to the time that
`
`the ‘155 patent issued on 2/28/2012.
`
`3 Petition at pp. 18-40.
`
`
`
`2
`
`
`
`IPR2014-01073
`U.S. Patent No. 6,805,779
`
`But these three references disclose very different structures and
`
`processes. Mozgrin teaches two different “[d]ischarge device configurations:
`
`(a) planar magnetron and (b) shaped-electrode configuration.”4 Mozgrin
`
`further discloses a “square voltage pulse application to the gap.”5 Kudryavtsev
`
`teaches a third 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.” Kudryavtsev’s system does not even
`
`have a magnet. Pinsley discloses a fourth type of device: “[A] flowing gas
`
`laser having an electric discharge plasma.”6
`
`And the Petitioner sets forth no evidence that the structure and process
`
`of Mozgrin would produce the particular plasma generator containing (i) a
`
`feed gas source comprising ground state atoms; (ii) an excited atom source that
`
`generates excited atoms from the ground state atoms and has a magnet that
`
`traps electrons near the ground state atoms; (iii) a plasma chamber that
`
`confines excited atoms; and (iv) an energy source that ionizes the confined
`
`excited atoms in a multi-step ionization process, as required by independent
`
`
`4 Mozgrin, Ex. 1003 at Fig. 1 caption.
`
`5 Id. at p. 402, col. 2, ¶ 2.
`
`6 Ex. 1005, Pinsley, Abstract.
`
`
`
`3
`
`
`
`IPR2014-01073
`U.S. Patent No. 6,805,779
`
`claims 1 and 18 of the ’779 patent if Mozgrin were somehow modified by a
`
`cylindrical structure that does not even have a magnet, like the structure
`
`disclosed in Kudryavtsev or a structure that uses a laser to generate light like
`
`Pinsley.7 Indeed, a laser emits light with the release of energy when electrons
`
`in atoms move to a lower energy state. Because higher energy atoms in
`
`Pinsley’s laser are used to make light, they would not be available for the
`
`sputtering process of Mozgrin.
`
`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.”8 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.9 Here, the
`
`
`7 See e.g., Petition, pp. 18-40.
`
`8 OSRAM Sylvania, Inc. v. Am Induction Techs., Inc., 701 F.3d 698, 706 (Fed. Cir.
`
`2012).
`
`9 Epistar, et al. v. Trustees Of Boston University, IPR2013-00298, Decision Not To
`
`Institute, Paper No. 18 (P.T.A.B. November 15, 2103).
`
`
`
`4
`
`
`
`IPR2014-01073
`U.S. Patent No. 6,805,779
`
`Petitioner did not set forth any such objective evidence.10 For this additional
`
`reason, there is not a reasonable likelihood that the Petitioner will prevail at
`
`trial with respect to at least one claim of the ’779 patent.
`
`Third, the prior art in each of the Petitioner’s proposed grounds of
`
`rejections are missing one or more limitations recited in the claims of the ‘779
`
`patent such as (i) an excited atom source that generates excited atoms from the
`
`ground state atoms and has a magnet that traps electrons near the ground state
`
`atoms; (ii) an energy source that ionizes the confined excited atoms in a multi-
`
`step ionization process.
`
`Fourth, the Petitioner neglected to follow the legal framework for an
`
`obviousness analysis set forth long ago by the Supreme Court. 11 That
`
`framework requires consideration of the following factors: (1) the scope and
`
`content of the prior art, (2) any differences between the claimed subject matter
`
`and the prior art, and (3) the level of skill in the art. The Board has previously
`
`
`10 See e.g., Petition, pp. 14-60.
`
`11 Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966); see
`
`also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 399 (2007) (“While the sequence
`
`of these questions might be reordered in any particular case, the [Graham]
`
`factors define the controlling inquiry.”)
`
`
`
`5
`
`
`
`warned that failure to identify differences between the cited art and the claims
`
`is a basis for denying a petition:
`
`IPR2014-01073
`U.S. Patent No. 6,805,779
`
`A petitioner who does not state the differences between
`
`a challenged claim and the prior art, and relies instead on the
`
`Patent Owner and the Board to determine those differences based
`
`on the rest of the submission in the petition risks having the
`
`corresponding ground of obviousness not included for trial for
`
`failing to adequately state a claim for relief. 12
`
`The Petitioner ignored the Board’s warning by failing to identify the
`
`differences between the challenged claim and the prior art. That is, the
`
`Petitioner failed to identify the claim limitations that it believed are missing
`
`from the primary references (i.e., Mozgrin and Iwamura) and are instead
`
`taught by the secondary references (i.e., Kudryavtsev, Pinsley, and
`
`Angelbeck).13 Rather, Petitioner argued that the claim limitations are taught
`
`by the combinations of references, leaving the Board to figure out whether the
`
`primary or secondary reference teaches the claim limitation.14 Under this
`
`circumstance, it would be “inappropriate for the Board to take the side of the
`
`
`12 Liberty Mutual v. Progressive Casualty, CBM-2012-00003, paper 7 at 2 – 3.
`
`13 See e.g., Petition, pp. 32, 34, 35, 36, 37, 40, and 55. .
`
`14 Id.
`
`
`
`6
`
`
`
`IPR2014-01073
`U.S. Patent No. 6,805,779
`
`Petitioner to salvage an inadequately expressed ground …”15 On this
`
`additional basis, inter partes review should be denied.
`
`Fifth, the Petition contains many redundant grounds of rejection.
`
`Indeed, the Petitioner proposed two or more grounds of rejections for every
`
`challenged claim and did not set forth a compelling reason for why the Board
`
`should institute this proceeding on multiple, redundant grounds.16
`
`In brief, the Petitioner failed to demonstrate that there is a reasonable
`
`likelihood that it will prevail with respect to at least one of the claims
`
`challenged in the petition for the four groups of reasons summarized in the
`
`table below:
`
`Grounds
`
`I
`
`Reasons For Not Instituting a Proceeding
`
`The reference that is primarily relied upon by the
`
`Petitioner (i.e., Mozgrin) was already considered by
`
`the Examiner and overcome during the prosecution
`
`of the application that led to the issuance of the ’779
`
`patent.
`
`All
`
`The Petitioner failed to show that a skilled artisan
`
`would have had a reasonable chance of success of
`
`
`15 Liberty Mutual v. Progressive Casualty, CBM-2012-00003, paper 8 at 14.
`
`16 Petition, pp. 18-60.
`
`
`
`7
`
`
`
`IPR2014-01073
`U.S. Patent No. 6,805,779
`
`achieving the claimed plasma generator containing
`
`(i) a feed gas source comprising ground state atoms;
`
`(ii) an excited atom source that generates excited
`
`atoms from the ground state atoms and has a
`
`magnet that traps electrons near the ground state
`
`atoms; (iii) a plasma chamber that confines excited
`
`atoms; and (iv) an energy source that ionizes the
`
`confined excited atoms in a multi-step ionization
`
`process, as required by independent claims 1 and 18
`
`of the ’779 patent by modifying Mozgrin’s planar
`
`magnetron with closely spaced electrodes by a
`
`cylindrical structure that does not even have a
`
`magnet like the structure disclosed in Kudryavtsev
`
`or a laser structure that makes no mention of
`
`excited atoms like Pinsley.
`
`All
`
`The prior art, either alone or in combination, would
`
`not have taught all the claim limitations of
`
`independent claims 1 and 18 to a skilled artisan at
`
`the time of the invention.
`
`All
`
`The Petitioner failed to identify differences between
`
`the primary references (i.e., Mozgrin and Iwamura)
`
`and the claimed invention in the proposed
`
`obviousness rejections.
`
`Grounds I or II
`
`Ground I using Mozgrin as a primary reference is
`
`redundant with Ground II using Iwamura as a
`
`primary reference and Petitioner did not set forth a
`
`
`
`8
`
`
`
`IPR2014-01073
`U.S. Patent No. 6,805,779
`
`compelling reason for why the Board should
`
`institute this proceeding on multiple, redundant
`
`grounds.
`
`
`
`For these reasons as expressed more fully below, the Board should deny the
`
`Petition.
`
`
`
`II. TECHNOLOGY BACKGROUND
`
`A. Overview Of Plasma Generation
`
`“A plasma is a collection of charged particles that move in random
`
`directions.”17 “For example, a plasma can be generated by applying a
`
`potential of several kilovolts between two parallel conducting electrodes in an
`
`inert gas atmosphere (e.g., argon) at a pressure that is between about 10-1 and
`
`10-2 Torr.”18 Plasma is generated for use in sputtering systems, which deposit
`
`films on substrates:
`
`Ions, such as argon ions, are generated and are then drawn out of
`
`the plasma and accelerated across a cathode dark space. The target
`
`
`17Exhibit 1001, ‘779 patent col. 1, ll. 7-9.
`
`18 Id. at col. 1, ll. 14-16.
`
`
`
`9
`
`
`
`IPR2014-01073
`U.S. Patent No. 6,805,779
`
`surface has a lower potential than the region in which the plasma
`
`is formed. Therefore, the target surface attracts positive ions.
`
`Positive ions move towards the target with a high velocity and
`
`then impact the target and cause atoms to physically dislodge or
`
`sputter from the target surface. The sputtered atoms then
`
`propagate to a substrate or other work piece where they deposit a
`
`film of sputtered target material.19
`
`Magnets can be used in sputtering systems to increase the deposition rate:
`
`Magnetron sputtering systems use magnetic fields that are shaped
`
`to trap and concentrate secondary electrons proximate to the target
`
`surface. The magnetic fields increase the density of electrons and,
`
`therefore, increase the plasma density in a region that is proximate
`
`to the target surface. The increased plasma density increases the
`
`sputter deposition rate.20
`
`These magnetron sputtering systems, however, have “undesirable non-
`
`uniform erosion of target material.”21 To address these problems, researchers
`
`increased the applied power and later pulsed the applied power.22 But
`
`increasing the power increased “the probability of establishing an electrical
`
`
`19 Id. col. 1, ll. 30-42.
`
`20 Id. at col. 1, ll. 50-57.
`
`21 Id. at col. 4, ll. 64-65.
`
`22 Id. at col. 4, ll. 3-20.
`
`
`
`10
`
`
`
`IPR2014-01073
`U.S. Patent No. 6,805,779
`
`breakdown condition leading to an undesirable electrical discharge (an
`
`electrical arc) in the chamber.”23 And “very large power pulses can still result
`
`in undesirable electrical discharges and undesirable target heating regardless of
`
`their duration.”24
`
`B. The ’779 patent: Dr. Chistyakov invents a new plasma generator
`containing a feed gas source, an excited atom source with a magnet
`that traps electrons, a plasma chamber that confines excited atoms,
`and an energy source that ionizes the confined excited atoms in a
`multi-step ionization process.
`
`To overcome the problems of the prior art, Dr. Chistyakov invented a
`
`plasma generator containing (i) a feed gas source comprising ground state
`
`atoms; (ii) an excited atom source that generates excited atoms from the
`
`ground state atoms and has a magnet that traps electrons near the ground state
`
`atoms; (iii) a plasma chamber that confines excited atoms; and (iv) an energy
`
`source that ionizes the confined excited atoms in a multi-step ionization
`
`process as recited in independent claims 1 and 18 and as illustrated in Fig. 2 of
`
`the ’779 patent, reproduced below:
`
`
`
`
`23 Id. at col. 4, ll. 7-9.
`
`24 Id. at col. 4, ll. 18-20.
`
`
`
`11
`
`
`
`IPR2014-01073
`U.S. Patent No. 6,805,779
`
`
`
`
`
`As illustrated by FIG. 2, Dr. Chistyakov’s plasma generation apparatus
`
`includes “an excited atom source that generates excited atoms from ground
`
`state atoms from a feed gas source 206.”25 In one embodiment, “the excited
`
`
`25 Id. at col. 4, ll. 30-31.
`
`
`
`12
`
`
`
`IPR2014-01073
`U.S. Patent No. 6,805,779
`
`atom source is a metastable atom source 204.”26 “The feed gas source 206
`
`provides a volume of ground state atoms 208 to the metastable atom source
`
`204.”27 “The plasma generator of the present invention can use any type of
`
`metastable atom source 204. Skilled artisans will appreciate that there are
`
`many methods of exciting ground state atoms 208 to a metastable state.”28
`
`Dr. Chistyakov’s plasma generation apparatus then moves the excited or
`
`metastable atoms toward a chamber:
`
`The plasma chamber 230 confines the volume of metastable atoms
`
`218. In one embodiment, the output of the metastable atom source
`
`204 is positioned so as to direct the volume of metastable atoms
`
`218 towards the cathode assembly 114. In one embodiment, the
`
`geometry of the plasma chamber 230 and the cathode assembly
`
`114 is chosen so that the metastable atoms reach the cathode
`
`assembly 114 at a time that is much less than an average transition
`
`time of the metastable atoms to ground state atoms.29
`
`The plasma generator also includes a magnet to increase the plasma density
`
`near the cathode:
`
`
`26 Id. at col. 4, ll. 31-34.
`
`27 Id. at col. 4, ll. 34-36.
`
`28 Id. at col. 5, ll. 1-5.
`
`29 Id. at col. 6, ll. 48-56.
`
`
`
`13
`
`
`
`IPR2014-01073
`U.S. Patent No. 6,805,779
`
`In one embodiment, a magnet (not shown) is disposed proximate
`
`to the cathode assembly 114. The magnet generates a magnetic
`
`field that traps electrons in the plasma proximate to the cathode
`
`assembly 114 and, therefore, increases the plasma density. In the
`
`region proximate to the cathode assembly 114.30
`
`“The plasma generator 200 of FIG. 2 uses a multi-step or stepwise
`
`ionization process to generate the plasma 202.”31 A “multi-step ionization
`
`process according to the present invention includes a first step where atoms are
`
`excited from a ground state to an excited state and a second step where atoms
`
`in the excited state are ionized.”32
`
`Dr. Chistyakov’s “multi-step ionization process … substantially
`
`increases the rate at which the plasma 202 is formed and therefore, generates a
`
`relatively dense plasma.”33 “Once a plasma having the desired characteristics
`
`is generated, the plasma 202 can be used in the processing of the workpiece
`
`138. … In a plasma sputtering application, ions in the plasma can be used to
`
`
`30 Id. at col. 6, ll. 34-39.
`
`31 Id. at col. 6, ll. 60-61.
`
`32 Id. at col. 7, ll. 4-7.
`
`33 Id. at col. 8, ll. 65-67.
`
`
`
`14
`
`
`
`IPR2014-01073
`U.S. Patent No. 6,805,779
`
`sputter material from the target 116. The sputtered material is deposited on the
`
`workpiece 138 to form a thin film.”34
`
`Thus, Dr. Chistyakov accomplished his breakthrough of improve plasma
`
`generation by inventing a particular apparatus comprising (i) a feed gas source
`
`comprising ground state atoms; (ii) an excited atom source that generates
`
`excited atoms from the ground state atoms and has a magnet that traps
`
`electrons near the ground state atoms; (iii) a plasma chamber that confines
`
`excited atoms; and (iv) an energy source that ionizes the confined excited
`
`atoms in a multi-step ionization process. In the claimed invention of the ‘779
`
`patent, ground state atoms are transformed to excited atoms and the excited
`
`atoms are moved to a plasma chamber where they are confined and ionized by
`
`an energy source.
`
`C. The Petitioner Mischaracterized The File History.
`
`The Petitioner alleged that the claims of the ’779 patent were allowed
`
`solely because the Applicant (i.e., now the Patent Owner) “amended the
`
`independent claims at issue here to require that the distinct source further
`
`
`34 Id. at col. 9, ll. 42-50.
`
`
`
`15
`
`
`
`IPR2014-01073
`U.S. Patent No. 6,805,779
`
`includes ‘a magnet that generates a magnetic field for substantially trapping
`
`electrons proximate to the ground state atoms.’”35
`
`But this allegation is not true because the Applicant amended the
`
`independent claims to specify that “an excited atom source receives ground
`
`state atoms from the feed gas source.”36 More important, the Applicant
`
`amended the claims at the suggestion of the Examiner to include the
`
`limitations from a dependent claim, as applicants frequently do.37 That is, the
`
`independent claims were allowed because of all the components recited within
`
`them (i.e., the feed gas source, excited atom source, plasma chamber, energy
`
`source) as well as the recitation of the transformation of ground state atoms to
`
`excited atoms and the movement of the excited atoms among the various
`
`components, and not because of one of the claim amendments made prior to
`
`allowance of the patent.
`
`
`
`
`
`
`35 Petition, p. 10 (citing Ex. 1009, 05/06/04 Resp. at 2, 4, 6, 8 and 10.
`
`36 Exhibit 1009, 05/06/04 Resp. at 2.
`
`37 Id. at 11.
`
`
`
`16
`
`
`
`IPR2014-01073
`U.S. Patent No. 6,805,779
`
`III. SUMMARY OF THE PETITIONER’S PROPOSED GROUNDS FOR
`REVIEW
`
`Confusingly, the Petition contains multiple, redundant grounds of
`
`rejection based on the various combinations of references. In particular, for
`
`every ground of rejection using the combination of Mozgrin, Kudryavtsev and
`
`Pinsley, there is a corresponding redundant ground using the combination of
`
`Iwamura and Angelbeck.38 That is, each and every challenged claim in the
`
`Petition is the subject of two different grounds of rejection.39 For the Board’s
`
`convenience below is a summary of claim rejections proposed by the
`
`Petitioner:
`
`1. Claims 1-4, 10-15, 17, 18, 24-27 and 29: obvious in view of the
`
`combination of Mozgrin, Kudryavtsev and Pinsley (Ground I);
`
`and
`
`2. Claims 1-4, 10-15, 17, 18, 24-27 and 29: obvious in view of the
`
`combination of Iwamura and Angelbeck.
`
`
`38 Petition, pp. 18-60.
`
`39 Id.
`
`
`
`17
`
`
`
`IPR2014-01073
`U.S. Patent No. 6,805,779
`
`IV. THERE IS NO REASONABLE LIKELIHOOD OF PETITIONER
`PREVAILING AS TO A CHALLENGED CLAIM OF THE ’779
`PATENT.
`
`Inter partes review cannot be instituted unless the Board determines that
`
`the Petition demonstrates that there is a reasonable likelihood that at least one
`
`of the claims challenged in the Petition is unpatentable.40 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.41 The
`
`bases for rejection under 35 U.S.C. § 103 must be made explicit.42 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 the skilled
`
`artisan would have had a reasonable expectation of success in doing so.”43
`
`The Petition’s evidence must also address every limitation of every challenged
`
`claim.
`
`
`40 37 C.F.R. § 42.108(c).
`
`41 See Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17 (1966).
`
`42 MPEP § 2143.
`
`43 OSRAM Sylvania, Inc. v. Am. Induction Techs., Inc., 701 F.3d 698, 706 (Fed.
`
`Cir. 2012).
`
`
`
`18
`
`
`
`IPR2014-01073
`U.S. Patent No. 6,805,779
`
`Here, the Board should decline to institute an inter partes review because
`
`(i) the Petition failed to demonstrate any motivation to combine the asserted
`
`references, (ii) the Petition failed to demonstrate that the prior art teaches every
`
`element of the challenged claims, (iii) there is a substantial amount of
`
`redundancy in the Petitioner’s proposed grounds of obviousness and the
`
`Petitioner did not set forth a compelling reason for why the Board should
`
`institute this proceeding on multiple, redundant grounds, and (iv) the Petition
`
`failed to provide a proper obviousness analysis because it did not discuss the
`
`differences between the claimed subject matter and the prior art.
`
`
`
`
`
`A. The Petition failed to demonstrate any motivation to combine.
`
`The Petitioner did not meet its statutory threshold for instituting a trial
`
`with respect to any of the three grounds because the Petitioner failed to
`
`demonstrate any motivation to combine. 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
`
`
`
`19
`
`
`
`IPR2014-01073
`U.S. Patent No. 6,805,779
`
`reasonable expectation of success in doing so.”44 This is determined at the time
`
`the invention was made.45 This temporal requirement prevents the “forbidden
`
`use of hindsight.”46 Rejections for obviousness cannot be sustained by mere
`
`conclusory statements.47 “Petitioner[s] must show some reason why a person of
`
`
`44 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).
`
`45 Id.
`
`46 See Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1379 (Fed. Cir. 2012)
`
`(“Indeed, where the invention is less technolo