`Patent No. 7,128,988
`Petition for Inter Partes Review
`Attorney Docket No. LMBTH M.10-001
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL
`
`__________________
`
`TDK CORPORATION
`Petitioner
`
`v.
`
`LAMBETH MAGNETIC STRUCTURES LLC
`Patent Owner
`
`__________________
`
`Inter Partes Review No. 2016-00013
`U.S. PATENT NO. 7,128,988
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,128,988
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`Case IPR2016-00013
`Patent Owner’s Preliminary Response
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`TABLE OF CONTENTS
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`Page
`
`TABLE OF AUTHORITIES ................................................................................... iii
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`EXHIBIT LIST ........................................................................................................ iv
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`I.
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`II.
`
`INTRODUCTION ........................................................................................... 1
`
`OVERVIEW OF U.S. PATENT 7,128,988 .................................................... 3
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`III.
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`PETITIONER’S BURDEN ............................................................................. 7
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`IV. CLAIM CONSTRUCTION ............................................................................ 8
`
`A.
`
`B.
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`V.
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`PETITIONER FAILED TO PROVIDE A PROPER
`INHERENCY ANALYSIS FOR EACH OF ITS GROUNDS ..................... 13
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`VI. GROUNDS .................................................................................................... 15
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`A. Ground 1: Shen In View Of Dill Does Not Invalidate
`
`Standard For Claim Construction ................................................................... 9
`“Uniaxial” ............................................................................................................. 10
`Claims 1 And 27 ................................................................................................. 17
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`1.
`
`Shen Does Not Disclose A “bcc-d” Layer That Is
`“Uniaxial” ................................................................................. 17
`
`2.
`
`3.
`
`4.
`
`Dill Does Not Remedy Shen’s Lack Of Disclosure
`Of A “bcc-d” Layer That Is “Uniaxial” Because
`Dill Also Lacks Such Layer ...................................................... 24
`
`Shen Does Not Disclose A “Symmetry Broken
`Structure” .................................................................................. 28
`
`A Person Of Ordinary Skill In The Art Would Not
`Modify Shen With The Teachings Of Dill To
`Create The Claimed “Uniaxial” “bcc-d Layer”
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`Because The Teachings Of Shen And Dill Are
`Incompatible .............................................................................. 33
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`Ground 2: Dill In View Of Shen Does Not Invalidate
`Claims 1, 3, 6-11, 13, 14, 17-19, 22, 24, 27-30, 34, and
`38 for failure to disclose a “bcc-d layer” which is
`
`“Uniaxial” ............................................................................................................. 38
`
`1.
`
`Dill Does Not Disclose An Interface Layer Having
`“bcc-d” Structure....................................................................... 38
`
`2.
`
`3.
`
`4.
`
`Dill Does Not Disclose An Interface Layer That Is
`Uniaxial ..................................................................................... 51
`
`Shen Does Not Remedy Dill’s Failure to Disclose
`A Symmetry Broken Structure.................................................. 51
`
`A Person Of Ordinary Skill In The Art Would Not
`Modify Shen With The Teachings Of Dill To
`Create The Claimed “Uniaxial” “bcc-d Layer”
`Because The Teachings Of Shen And Dill Are
`Incompatible .............................................................................. 52
`
`Ground 3: Dill, Shen And Heim Do Not Invalidate
`Claims 12, 15, 16, 21, And 23 Because Heim Does Not
`Remedy The Deficiencies Of Dill And Shen, And
`
`D. Ground 4: Dill, Shen And Lambeth I Do Not Invalidate
`Claims 2, 25, 26, And 31 Because Lambeth I Does Not
`Remedy The Deficiencies Of Dill And Shen, And
`
`B.
`
`C.
`
`E.
`
`
`
`Would Also Not Be Combined With Them .............................................. 53
`Would Also Not Be Combined With Them .............................................. 54
`Combined With Them ...................................................................................... 55
`
`Ground 5: Dill, Shen And Noguchi Do Not Invalidate
`Claim 39 Because Noguchi Does Not Remedy The
`Deficiencies Of Dill And Shen, And Would Also Not Be
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`VII. DEFICIENCIES WITH THE PETITION WARRANTING
`DENIAL OF GROUNDS 1-5 ........................................................................ 57
`
`for Adopting Redundant Grounds of Rejection. ...................................... 57
`
`A.
`
`The Petition Fails to Identify Any Compelling Rationale
`
`VIII. CONCLUSION .............................................................................................. 60
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`TABLE OF AUTHORITIES
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`
`CASES
`Cisco Sys., Inc. v. C-Cation Tech, LLC,
`IPR2014-00454 (P.T.A.B. Aug. 29, 2014) ........................................................... 8
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`Page(s)
`
`Epistar, et al. v. Trustees of Boston University,
`IPR2013-00298 (P.T.A.B. Nov. 15, 2103) ......................................................... 37
`
`Illumina, Inc. v. Trustees of Columbia Univ.,
`IPR2012-00006 (P.T.A.B. May 10, 2013) ......................................................... 57
`
`Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387-88,
`21 U.S.P.Q.2d 1383, 1386 (Fed. Cir. 1992) ....................................................... 10
`
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) ............................................................................ 9
`
`In re Oelrich,
`666 F.2d 578, 581 (C.C.P.A. 1981) .................................................................... 15
`
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`CBM 2012-00003 (P.T.A.B. Oct. 25, 2012) ...................................................... 57
`
`OSRAM Sylvania, Inc. v. Am. Induction Techs., Inc.,
`701 F.3d 698 (Fed. Cir. 2012) ............................................................................ 38
`
`Par Pharma., Inc. v. TWI Pharms., Inc.,
`773 F.3d 1186 (Fed. Cir. 2014) ...................................................................passim
`
`In re Paulsen,
`30 F.3d 1475 (Fed. Cir. 1994) .............................................................................. 9
`
`Sandoz Inc. v. EKR Therapeutics, LLC,
`IPR2015-00007, (P.T.A.B. Apr. 24, 2015) ......................................................... 14
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`STATUTES, RULES & OTHER AUTHORITIES
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`35 U.S.C. § 103 .................................................................................................. 17, 38
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`35 U.S.C. § 103(a) ..................................................................................................... 2
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`35 U.S.C. § 312(a)(3) ................................................................................................. 7
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`35 U.S.C. § 313 .......................................................................................................... 1
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`35 U.S.C. § 314 .......................................................................................................... 3
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`35 U.S.C. § 314(a) ..................................................................................................... 7
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`37 C.F.R. § 42.100(b) ................................................................................................ 9
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`37 C.F.R. § 42.104(b)(4) ............................................................................................ 7
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`37 C.F.R. § 42.107 ..................................................................................................... 1
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`37 C.F.R. § 42.1(b) .................................................................................................. 58
`
`Manual of Patent Examining Procedures § 2111 ...................................................... 9
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`Standing Order ¶ 121.5.2 (B.P.A.I. Mar. 8, 2011) ..................................................... 8
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`PATENT OWNER’S EXHIBIT LIST
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`2002
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`2003
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`2004
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`Exhibit # Description
`J. Shen et al., “Magnetic Moment of fcc Fe(111) Ultrathin Films by
`2001
`Ultrafast Deposition on Cu(111),” Physical Review Letters, Vol. 80,
`No. 9, 2 March 1998
`S. Chikazumi, “Physics of Ferromagnetism,” pp. i-xii, 249-342
`[chapters 12-13], Second Edition, 1997
`C. Boelgin et al., “In-plane magnetocrystalline anisotropy observed
`on Fe/Cu(111) nanostructures grown on stepped surfaces," Physical
`Review B Vol. 66, 014439, July 2002
`T. P. Drüsedau et al., "Energy transfer into the growing film during
`sputter deposition: An investigation by calorimetric measurements
`and Monte Carlo simulations," Journal of Vacuum Science &
`Technology A 17, 2896, 1999
`2005 M. T. Kief and W. F. Egelhoff, Jr., "Growth and structure of Fe and
`Co thin films on Cu(111), Cu(100), and Cu(110):A comprehensive
`study of metastable film growth" Physical Review B Vol 47, No. 16,
`15 APRIL 1993-II
`J. Shen et al., "TOPICAL REVIEW” “The effect of spatial
`confinement on magnetism: films, stripes and dots of Fe on
`Cu(111)", J. Phys.: Condens. Matter 15, pages R1–R30, 2003
`J. Shen et al. "Magnetism in one dimension: Fe on Cu(111),"
`Physical Rev. B VOL 56, No. 5, p2340, 1 Aug. 1997-I
`J.A.Thornton “Influence of apparatus geometry and deposition
`conditions on the structure and topography of thick sputtered
`coatings,” Journal of Vacuum Science and Technology, vol. 11,
`issue 4, p. 666, 1974
`F. Pan et al., “Magnetic properties of fcc iron in Fe fcc metal
`multilayers,” Thin Solid Films, 334, pages 196-200, 1998
`
`2006
`
`2007
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`2008
`
`2009
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`I.
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`INTRODUCTION
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`Patent Owner Lambeth Magnetic Structures, LLC (“Lambeth”) submits the
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`following preliminary response (“Preliminary Response”) to the Petition in
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`IPR2016-00013 (the “Petition”) filed by TDK Corporation (“Petitioner” or
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`“TDK”) for Inter Partes Review of claims 1-3, 6-19, 21-31, 34, 38, and 39 of U.S.
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`Patent No. 7,128,988 (“the ‘988 Patent” Exh.1001). As the Patent Trial And
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`Appeal Board (“PTAB”) filed the Notice Of Filing Date Accorded To Petition
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`(Paper No. 3) on October 15, 2015, this Preliminary Response is timely under
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`35 U.S.C. § 313 and 37 C.F.R. § 42.107.
`
`Petitioner raises five obviousness grounds in its Petition seeking to
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`invalidate claims 1-3, 6-19, 21-31, 34, 38, and 39 of the ‘988 Patent: (1) Ground 1
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`relies on Shen (Exh. 1011) as a primary reference and Dill (Exh. 1009) as a
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`secondary reference; and (2) Grounds 2 – 5 rely on Dill as a primary reference and
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`Shen, along with three other references, as secondary references (Heim, Lambeth I
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`and Noguchi). (See Pet. 15) Each of Petitioner’s grounds with respect to each
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`challenged independent claim relies on drawing undisclosed conclusions based on
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`the information disclosed in the art.
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`Despite the fact that certain claim limitations are not explicitly disclosed in
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`both Shen and Dill—neither Shen nor Dill disclose the “uniaxial” limitation, Shen
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`does not disclose the “symmetry broken structure” limitations, and Dill does not
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`disclose the “bcc-d layer” limitation – Petitioner erroneously draws the conclusion
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`that the art teaches these limitations. That is, Petitioner must rely upon the
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`doctrine of inherency to make its case, which requires that undisclosed features of
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`the claimed invention must be “necessarily present” in the single reference at issue
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`or the “natural result” of an obviousness combination. As discussed below,
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`Petitioner does not, and cannot, show that these missing features are inherent in
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`Shen and Dill, and for that reason alone, inter partes review should not be
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`instituted.
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`Additionally, each of Petitioner’s grounds relies on an improper claim
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`construction. As is explained in detail below, the inventor specifically defined the
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`“uniaxial” limitation in the specification, which Petitioner ignores.
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`Moreover, one skilled in the art would not have been motivated to combine
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`Shen and Dill. The pertinent question in any obviousness analysis is not whether
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`the claimed elements were each independently known, but rather, “if the
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`differences between the claimed invention and the prior art are such that the
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`claimed invention as a whole would have been obvious before the effective filing
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`date of the claimed invention to a person having ordinary skill in the art to which
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`the claimed invention pertains.” 35 U.S.C. § 103(a) (emphasis added). Each of
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`Petitioner’s grounds fails under that standard because Petitioner does not provide
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`any legitimate rationale for combining the references in question. Accordingly, for
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`the reasons discussed in this response (which are not meant to be exhaustive),
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`Lambeth respectfully submits that Claims 1-3, 6-19, 21-31, 34, 38 and 39 are
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`patentable over each of Petitioner’s proffered obviousness combinations. The
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`Board should therefore not institute inter partes review of the challenged claims
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`because Petitioner has failed to demonstrate a reasonable likelihood that it would
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`prevail with respect to any of the claims challenged in the Petition. See
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`35 U.S.C. § 314.
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`II. OVERVIEW OF U.S. PATENT 7,128,988
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`The inventor of the ‘988 Patent, Dr. David Lambeth, is a professor emeritus
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`of Electrical and Computer Engineering and Material Science and Engineering
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`Departments at Carnegie Mellon University. Dr. Lambeth holds a Bachelor of
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`Science degree in Electrical Engineering from the University of Missouri, 1969, as
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`well as a Ph.D in solid state physics from the Physics Department of Massachusetts
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`Institute of Technology, 1973. Dr. Lambeth’s Ph.D thesis was on critical
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`phenomena of magnetic materials. In total, Dr. Lambeth has worked in the field of
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`magnetism, magnetic materials, and data storage for over 45 years. He is an
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`inventor on over 40 U.S. Patents and an author of over 100 reviewed publications.
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`Dr. Lambeth was also an associate director of the Data Storage Systems Center at
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`Carnegie Mellon University, which is a world leading academic research
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`institution in data storage technology including magnetic data storage technology
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`for the hard disk drive application as well as optical disk storage technology and
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`emerging solid-state memory technologies. After obtaining his Ph.D. and working
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`in industrial research and management for over 15 years, Dr. Lambeth joined
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`Carnegie Mellon University. There he taught undergraduate and graduate level
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`courses for over 20 years, including graduate level courses in the physics of
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`magnetism, magnetic materials and applied magnetism.
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`Because of his experience, Dr. Lambeth is very knowledgeable in the field
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`of magnetic materials and he recognized that he was not inventing in a vacuum.
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`Accordingly, the specification of the ‘988 Patent details prior art technology,
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`literature, and patents that existed prior to the August 29, 2001 effective filing date
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`in order to explain the benefits of the inventions claimed in the ‘988 Patent over
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`that prior art. (Exh.1001, at cols.1-12.) The focus and theme of much of that
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`description is the challenge associated with controlling the magnetic orientation or
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`anisotropy directions of magnetic thin films to achieve a desired in-plane uniaxial
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`anisotropy resulting in improved magnetic device properties. (See, e.g., id. at 1:35-
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`53, 12:67-13:2.)
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`Magnetic anisotropy (anti-isotropic) generally refers to the property of a
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`magnetic material to have its magnetization oriented along a preferred direction or
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`directions, but more importantly not having its orientation along other non-
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`preferred directions when there is no applied magnetic field. (Id. 1:31-38.) When
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`the magnetization is oriented along a preferred direction, the magnetic anisotropic
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`energy of the system is at a minimum. When the magnetization is oriented along a
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`non-preferred direction the magnetic anisotropy energy of the system is at a
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`maximum. (Id. 1:35-42.) The preferred and non-preferred directions are generally
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`referred to as magnetic easy axes and hard axes, respectively. (Id. 1:39-42.)
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`“Uniaxial” anisotropy is a very special case of anisotropy and is defined in the
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`‘988 Patent “to exist if the anisotropy energy function only contains a single
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`maximum and single minimum as the magnetization angle, θ, is rotated by 180
`
`degrees from a physical axis.” (Id. 1:56-60.)
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`Another property of magnetic films relates to the concept that “thin films
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`prefer to grow with the atoms arranged on the thin film surface to minimize the
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`atomic bonding energy.” (Id. 9:15-17.) In this regard, the crystalline structure of a
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`second material that is grown on an underlayer of a first material can be controlled
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`by the crystalline structure of the first material. (Id. 9:38-10:23.) The underlying
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`first material is commonly referred to as a template.
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`When a second material having a body centered cubic (bcc) lattice structure
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`(or a bcc derivative) is grown upon a first material having a face centered cubic
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`(fcc) lattice structure with (111) crystalline texture (or a hexagonal close packed
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`(hcp) lattice with (0002) crystalline texture) (i.e., a hexagonal atomic template),
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`there are a limited number of ways that the bcc material is structurally oriented on
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`the template material. (Id. 10:39-41.) One set of possible structural orientations of
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`the first material is referred to as the six crystallographic “variants” (also known as
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`Kurdjumov–Sachs (KS) or crystalline domains). (Id.) These six possible variants
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`are the focus of ‘988 Patent. When all six of these variants occur in equal volumes
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`on a template, the structure is said to be symmetrical. When less than six variants
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`occur or when the volumes of the variants are not all equal, the structure is said to
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`be symmetry broken. (Id. 23:38-41.) Each independent claim of the ‘988 Patent;
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`namely, claims 1 and 27, captures the unique aspects of Dr. Lambeth’s invention
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`of a uniaxial magnetic “bcc-d layer” with a “symmetry broken structure,” in accord
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`with the definition in the ‘988 Patent of “uniaxial.”
`
`Claim 1 is illustrative and recites:
`1. A magnetic material structure comprising:
`a substrate;
`at least one bcc-d layer which is magnetic, forming a uniaxial symmetry
`broken structure; and
`at least one layer providing a (111) textured hexagonal atomic template
`disposed between said substrate and said bcc-d layer.
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`(Exh.1001, at claim 1)
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`III. PETITIONER’S BURDEN
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`An inter partes review may be instituted when “the information presented in
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`the petition . . . . shows that there is a reasonable likelihood that the petitioner
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`would prevail with respect to at least 1 of the claims challenged in the petition.”
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`See 35 U.S.C. § 314(a) (emphasis added). Any petition for inter partes review
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`must “identif[y] . . . with particularity . . . the grounds on which the challenge to
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`each claim is based.” 35 U.S.C. § 312(a)(3). As such, it is the petitioner’s burden
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`to “specify where each element of the claim is found in the prior art patents or
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`printed publications relied upon.” 37 C.F.R. § 42.104(b)(4).
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`Petitioner has not satisfied this burden. Here, Petitioner’s attempt to satisfy
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`its burden relies primarily on two references (Shen and Dill), its own claim
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`construction for “uniaxial,” and the testimony of its expert Dr. Sinclair. But, as
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`will be described herein, the two references, alone or in combination, do not
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`disclose all the elements of any of the claims and in fact, Petitioner must prove that
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`certain undisclosed features are inherent, which it has failed to do; and Petitioner’s
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`claim construction for “uniaxial” is improper even under the broadest reasonable
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`interpretation standard.
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`It is Petitioner's duty to provide sufficient grounds for the institution of a
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`review “focus[ing] on concise, well organized, easy-to-follow arguments supported
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`by readily identifiable evidence of record.” Cisco Sys., Inc. v. C-Cation Tech,
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`LLC, IPR2014-00454, Paper No. 12, at 11 (P.T.A.B. Aug. 29, 2014). If the
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`Petitioner cannot provide such sufficient grounds, as in the present Petition, the
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`Board “will not take on the role of advocate for a party, trying to make out a case
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`the party has not adequately stated.” (Standing Order ¶ 121.5.2 (B.P.A.I. Mar. 8,
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`2011).)
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`IV. CLAIM CONSTRUCTION
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`The claim construction advanced by the Petitioner for the term “uniaxial” is
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`improper under the broadest reasonable interpretation standard because it ignores
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`the explicit definition that the patentee, as his own lexicographer, expressly
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`provided in the specification of the ‘988 Patent. Instead, the Petitioner has crafted
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`its own definition according to its needs, since it cannot argue that the prior art
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`expressly or inherently teaches the “uniaxial” limitation as properly construed.
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`Nor does the declaration of Petitioner’s expert, Dr. Sinclair, salvage its position, as
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`Dr. Sinclair does not explain how Petitioner’s construction is equivalent to the
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`express definition in the patent—a definition Dr. Sinclair himself recognized.
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`(Exh.1006 ¶¶ 23, 68.) Because Petitioner fails to properly construe this claim term,
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`and because its analysis depends on its erroneous construction, its Petition should
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`be rejected.
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`A.
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`Standard For Claim Construction
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`An unexpired claim subject to inter partes review is given its “broadest
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`reasonable construction in light of the specification of the patent in which it
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`appears.” 37 C.F.R. § 42.100(b). “That is not to say, however, that the Board may
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`construe claims during [an] IPR so broadly that its constructions are unreasonable
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`under general claim construction principles.” Microsoft Corp. v. Proxyconn, Inc.,
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`789 F.3d 1292, 1298 (Fed. Cir. 2015). Under a broadest reasonable interpretation,
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`words of the claim must be given their plain meaning, unless such meaning is
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`inconsistent with the specification. See MPEP § 2111.01 I. An applicant is
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`entitled to be his or her own lexicographer and may rebut the presumption that the
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`claim terms are to be given their ordinary and customary meaning by clearly
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`setting forth a definition of the term that is different from its ordinary and
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`customary meaning(s) in the specification at the time of filing. See MPEP
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`§ 2111.01 IV.A; In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (holding that
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`an inventor may define specific terms used to describe an invention, but must do so
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`‘with reasonable clarity, deliberateness, and precision’ and, if done, must ‘set out
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`his uncommon definition in some manner within the patent disclosure’ so as to
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`give one of ordinary skill in the art notice of the change in meaning)
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`(quoting Intellicall, Inc. v. Phonometrics,
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`Inc., 952 F.2d 1384, 1387-88,
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`21 U.S.P.Q.2d 1383, 1386 (Fed. Cir. 1992)).
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`Lambeth reserves the right to offer its own proposed construction in the
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`event that an inter partes review is instituted. In addition, Lambeth reserves the
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`right to advocate a different construction for any term construed during these
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`proceedings in District Court or other proceedings in which construction of claim
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`terms may be required.
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`B.
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`“Uniaxial”
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`Petitioner
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`improperly
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`interprets “uniaxial”
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`to mean “a single easy
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`magnetization axis aligned in a particular direction.” ( Pet. 12.) This interpretation
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`is improper under the broadest reasonable interpretation standard as it ignores
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`aspects of the explicit definition of “uniaxial” provided in the specification of the
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`‘988 Patent. Petitioner relies on its improper definition for all of its obviousness
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`grounds. Such reliance renders the Petition fatally defective.
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`Dr. Lambeth chose to be his own lexicographer when he defined “uniaxial.”
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`At Exhibit 1001, at 1:56-60, the specification states (emphasis added): “Here, we
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`define a ‘uniaxial’ anisotropy to exist if the anisotropy energy function only
`
`contains a single maximum and single minimum as the magnetization angle, θ, is
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`rotated by 180 degrees from a physical axis.” The specification therefore provides
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`an explicit definition for “uniaxial.”
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`Even while acknowledging that “the ‘988 Patent presents a mathematical
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`definition of ‘uniaxial anisotropy,’ in terms of an ‘energy density function’ having
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`‘a single maximum and a single minimum,’” Petitioner stays clear of adopting this
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`definition. (Pet. 13 ll.6-10; see also Exh.1006 [Decl. of Dr. Sinclair] ¶ 23.)
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`Instead, Petitioner proffers its own interpretation of “uniaxial” that is far broader
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`than the specification’s definition.
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` Without such an unreasonably broad
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`interpretation, i.e., “a single easy magnetization axis aligned in a particular
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`direction” (See Pet. 12-13 (citing Exh.1006 ¶¶ 23, 68,71 [Decl. of Dr. Sinclair])),
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`Petitioner would lack a basis for its invalidity positions.
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`Petitioner’s proposed interpretation of the explicit definition of “uniaxial”
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`(Exh.1001, at 1:56-60 (’988 Patent)) is unreasonably broad and so fails on two
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`scores. First, Petitioner’s interpretation ignores the “single maximum” in the
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`anisotropy energy function aspect of the specification’s definition. Petitioner’s and
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`Dr. Sinclair’s interpretation apparently equates the “single minimum” in the
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`anisotropy energy function with a “single easy magnetization axis” while
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`simultaneously failing to account for “a single maximum” in the anisotropy energy
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`function aspect of the specification’s definition, which Petitioner would have
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`probably equated to a “single hard magnetization axis.”
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`Second, Petitioner’s interpretation does not account for the fact that under
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`the specification’s definition of “uniaxial,” the “maximum” and “minimum” must
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`be found as “as the magnetization angle, θ, is rotated by 180 degrees from a
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`physical axis.” (Exh.1001, at 1:56-60.) Dr. Sinclair’s interpretation merely
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`requires a single easy axis aligned in a particular direction, which may, or may not,
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`fall within the 180 degrees of rotation from a physical axis. Dr. Sinclair’s
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`interpretation does not require that a maximum and a minimum fall within the
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`same 180 degrees of a physical axis.
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`Despite recognizing the explicit definition of “uniaxial” anisotropy in the
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`specification, Dr. Sinclair interprets “uniaxial” to suit Petitioner’s purpose on the
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`basis that a person of ordinary skill in the art would have understood the definition
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`in the patent “to be demonstrated if the material has one easy magnetization axis.”
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`(Exh.1006 ¶ 68.) Dr. Sinclair’s opinion is conclusory; he provides no support for
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`his flawed definition, which does not comport with the definition in the
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`specification.
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` Most egregiously, Petitioner and Dr. Sinclair
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`ignore
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`the
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`specification’s requirement for a “single maximum” as well as a “single
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`minimum.”
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`For the aforementioned reasons, the Board cannot adopt Petitioner’s
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`interpretation for “uniaxial” in determining the scope of the claims and the content
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`of the prior art. It is not the Board’s role to advocate for any party, including the
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`Petitioner. (See Infra Part III). Rather, it was Petitioner’s burden to show how the
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`claimed subject matter is obvious, which burden it failed to meet resulting in a fatal
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`defect in this Petition. If the Board was to adopt any interpretation for “uniaxial,” it
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`should adopt Lambeth’s definition, i.e., the definition in the specification.
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`Due to Petitioner’s reliance on its improper definition for all of its
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`obviousness grounds, Petitioner cannot possibly meets its burden to show that
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`there is a reasonable likelihood that it would prevail with respect to at least one of
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`the claims challenged in the Petition. Thus, an inter partes review should not be
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`instituted.
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`V.
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`PETITIONER FAILED TO PROVIDE A PROPER INHERENCY
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`ANALYSIS FOR EACH OF ITS GROUNDS
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`Often, Petitioner cannot point to an explicit disclosure for a particular claim
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`limitation in its prior art. At these times, it argues that the reference implicitly
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`discloses these limitations based on descriptions therein. However, Petitioner fails
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`to recognize that because these claim limitations are missing, it must argue that
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`they are inherent in the art or the proffered combination. Petitioner’s failure to
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`make such arguments, as detailed below, is fatal to its Petition.
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`Specifically, as described in further detail below, neither Shen nor Dill
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`explicitly discloses the “uniaxial” limitation (under any construction), Shen does
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`not explicitly disclose the “symmetry broken structure” limitation, and Dill does
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`not explicitly disclose the “bcc-d” layer limitation. Even where Petitioner
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`acknowledges these failures of disclosure – Dill’s failure to disclose a “symmetry
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`broken structure” (Pet. 28) and its recognition that Shen may not disclose the
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`“uniaxial” limitation (id. at 18) – it does not even attempt to argue that these
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`disclosures are inherent to either the references alone or in combination. Such
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`failure to show inherency where its references lack explicit disclosure is fatal to the
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`Petition.
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`While “inherency may supply a missing claim limitation in an obviousness
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`analysis,” Par Pharma., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1194-95 (Fed.
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`Cir. 2014), “[a] party must [] meet a high standard in order to rely on inherency to
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`establish the existence of a claim limitation in the prior art in an obviousness
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`analysis” id. at 1195-96; see also Sandoz Inc. v. EKR Therapeutics, LLC, IPR2015-
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`00007, Paper No. 20 at 10-13 (P.T.A.B. Apr. 24, 2015). Specifically, “the
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`limitation at issue necessarily must be present, or the natural result of the
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`combination of elements explicitly disclosed by the prior art.” Id. As the Federal
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`Circuit has explained:
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`Inherency [] may not be established by probabilities or possibilities.
`The mere fact that a certain thing may result from a given set of
`circumstances is not sufficient. If, however, the disclosure is sufficient
`to show that the natural result flowing from the operation as taught
`would result in the performance of the questioned function, it seems to
`be well settled that the disclosure should be regarded as sufficient.
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`Id. at 1195 (quoting In re Oelrich, 666 F.2d 578, 581 (C.C.P.A. 1981)). Thus, “the
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`concept of inherency must be limited when applied to obviousness, and is present
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`only when the limitation at issue is the ‘natural result’ of the combination of prior
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`art elements.” Id.
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`VI. GROUNDS
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`Petitioner argues that references Shen (Exh.1011) and Dill (Exh.1009) are
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`combinable and, together, disclose the limitations of all the independent claims and
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`many of the dependent claims of the ‘988 Patent. However, to reach its
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`conclusion, Petitioner misconstrues the teachings of Shen and Dill and contrives
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`motivations to combine those references, which a person of ordinary skill in the art
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`would not combine for the reasons discussed below.
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`Petitioner ignores the fact that the references fail to explicitly disclose
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`certain claim limitations: neither reference explicitly discloses the “uniaxial”
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`limitation (under any construction), Shen does not exp