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`Inter Partes Review No.: IPR2016-00636
`U.S. Patent No. 6,661,639
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`AVX CORPORATION
`Petitioner
`v.
`
`PRESIDIO COMPONENTS, INC.
`Patent Owner
`
`
`
`
`
`
`
`
`
`Patent No. 6,661,639
`Issue Date: December 9, 2003
`Title: SINGLE LAYER CAPACITOR
`_______________
`
`Inter Partes Review No. IPR2016-00636
`____________________________________________________________
`
`
`PETITIONER REPLY
`
`
`
`
`

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`Inter Partes Review No.: IPR2016-00636
`U.S. Patent No. 6,661,639
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`TABLE OF CONTENTS
`
`I. 
`
`II. 
`
`Introduction .................................................................................................... 1 
`
`B. 
`
`C. 
`
`It Was Obvious to a POSITA to Combine the Teachings of
`Liebowitz and Devoe ..................................................................................... 2 
`A. 
`Liebowitz Does Not “Teach Away” from the Proposed
`Combination with Devoe .......................................................... 3 
`The Combination of Liebowitz and Devoe Would Not Have
`Reduced Capacitance ................................................................ 8 
`Liebowitz’s Designation of SLCs With Buried Metallizations as
`Multi-Layer Devices Does Not Render the Combination of
`Liebowitz and Devoe Nonobvious ......................................... 10 
`Lack of Simplicity of an Improved Design Does Not Negate a
`Motivation to Combine References ....................................... 11 
`E.  Whether Devoe Can be Bodily Incorporated Into Liebowitz is
`Irrelevant ................................................................................. 12 
`
`D. 
`
`III.  SinghDeo Combined with Liebowitz, Devoe and Veater Renders
`Claims 2, 9 and 20 Obvious ......................................................................... 15 
`
`IV.  Claim Limitation 1(b) and Claim 5 Are Obvious in further View of
`Veater and Insetta ........................................................................................ 18 
`
`V.  Metal-Coated Ceramic Particles of Yih Can Be Used With
`Capacitor Electrodes ................................................................................... 22 
`
`VI.  There is Motivation to Combine Liebowitz with Veater, Insetta, or
`Yih ................................................................................................................. 22 
`
`VII.  Dr. Chung is Qualified to Provide Expert Testimony in this
`Proceeding. ................................................................................................... 23 
`
`CONCLUSION ....................................................................................................... 24 
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`

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`Inter Partes Review No.: IPR2016-00636
`U.S. Patent No. 6,661,639
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`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`In re Clay,
`966 F.2d 656 (Fed. Cir. 1992)..................................................................................................15
`
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314 (Fed. Cir. 2009)..................................................................................................3
`
`In re Etter,
`756 F.2d 852 (Fed. Cir. 1985) (en banc) ..................................................................................11
`
`In re Gurley,
`27 F.3d 551 (Fed. Cir. 1994)....................................................................................................21
`
`In re Keller,
`642 F.2d 413 (CCPA 1981) .....................................................................................................13
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .................................................................................................................20
`
`In re Marosi,
`710 F.2d 799 (Fed. Cir. 1983)..................................................................................................21
`
`Merck v. Gnosis,
`808 F.3d 829 (Fed. Cir. 2015)....................................................................................................4
`
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012)..........................................................................................13, 21
`
`In re Nievelt,
`482 F.2d 965 (CCPA 1973) .....................................................................................................13
`
`SEB S.A. v. Montgomery Ward & Co., Inc.,
`594 F.3d 1360 (Fed. Cir. 2010)................................................................................................23
`
`In re Sernaker,
`702 F.2d 989 (Fed. Cir. 1983)....................................................................................................4
`
`Smith & Nephew, Inc. v. Rea,
`721 F.3d 1371 (Fed. Cir. 2013)................................................................................................18
`
`

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`Inter Partes Review No.: IPR2016-00636
`U.S. Patent No. 6,661,639
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`In re Sneed,
`710 F.2d 1544 (Fed. Cir. 1983)..........................................................................................11, 13
`
`
`
`
`
`Statutes
`
`C.C.P.A. 1961 ................................................................................................................................13
`
`Other Authorities
`
`37 C.F.R. § 42.24 .............................................................................................................................2
`
`37 C.F.R. § 42.24(c).........................................................................................................................2
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`Inter Partes Review No.: IPR2016-00636
`U.S. Patent No. 6,661,639
`
`I.
`
`Introduction
`
`
`
`In the Patent Owner Response (“POR”), Presidio asserts that the Board erred in
`
`instituting trial, contending that the combination of Liebowitz and Devoe is not
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`proper because Liebowitz allegedly “teaches away” from the combination with
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`Devoe. Presidio also attacks various prior art references from the Board’s
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`decision, alleging technical flaws and limitations, as well as a lack of motivation to
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`combine. Lastly, Presidio argues that Petitioner’s expert is not qualified despite a
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`Ph.D. in Materials Science from MIT and 40 years of research and teaching in
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`capacitors. Both the facts and the law fail to support Presidio’s positions.
`
`Not only does the prior art not teach away as Presidio alleges, but equally
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`important is that the ’639 patent nowhere discloses how the inventors overcame or
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`avoided the “problems” Presidio alleges to be identified in the prior art. The
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`seminal case on “teaching away,” United States v. Adams, unequivocally
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`establishes that patentability does not attach under such circumstances. 383 U.S.
`
`39, 52 (1966) (“This is not to say that one who merely finds new uses for old
`
`inventions by shutting his eyes to their prior disadvantages thereby discovers a
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`patentable innovation.”). This controlling case law undercuts virtually every
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`argument made in the Response.
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`Lastly, further undermining Presidio’s position is critical testimony from its
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`own expert that composite electrodes (i.e., those with ceramic, metal, and even
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`Inter Partes Review No.: IPR2016-00636
`U.S. Patent No. 6,661,639
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`glass) were well-known and even preferred for use in commercial SLCs. (E.g., Ex.
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`
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`1018, 30:17–31:18; Ex. 2001 ¶¶163-70). Combined with the express disclosures
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`of Devoe, this testimony amounts essentially to an admission of obviousness as to
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`a large proportion of the claims at issue, which require nothing more than the
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`structure of Devoe combined with composite electrodes. This and other
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`deficiencies in Presidio’s collateral attacks on the Petition and Institution Decision
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`are further discussed below.
`
`II.
`It Was Obvious to a POSITA to Combine the Teachings of Liebowitz
`and Devoe
`
`Presidio asserts that the teachings of Liebowitz and Devoe are not combinable
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`for four reasons: 1) Liebowitz teaches away from the use of buried metallizations;
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`2) the combination would have reduced capacitance instead of increasing
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`capacitance; 3) using buried metallizations results in a multi-layer capacitor; and 4)
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`the combination would have produced a more complex device. (POR, 22-23, 29-
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`36.) Each of these reasons are without merit and fail to render the combination of
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`Liebowitz and Devoe nonobvious as discussed in turn below.
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`Moreover, the ’639 patent uses composite electrodes (as in Liebowitz) and
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`buried metallizations (as in Devoe) in a “single layer” capacitor without solving or
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`even mentioning the alleged problems asserted by Presidio. (Ex. 1016 ¶8.)
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`Neither Presidio nor Dr. Randall explain how or why all of the alleged inductance,
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`manufacturing, and “loss of capacitance” issues created by the combination of
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`Inter Partes Review No.: IPR2016-00636
`U.S. Patent No. 6,661,639
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`Liebowitz and Devoe are overcome by the ’639 patent. Presidio has therefore not
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`
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`established a viable claim of patentability. Adams, 383 U.S. at 52. As
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`demonstrated below, these alleged problems do not render the proposed
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`combination of Liebowitz and Devoe nonobvious.
`
`A. Liebowitz Does Not “Teach Away” from the Proposed Combination
`with Devoe
`
`Presidio specifically asserts that Liebowitz teaches the avoidance of “buried
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`metallization and vias ... due to the undesirable high inductance results.” (POR,
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`22, 30.) However, it is well-settled that “a reference does not teach away … if it
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`merely expresses a general preference for an alternative invention.” DePuy Spine,
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`Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009).
`
`Liebowitz does not teach that buried metallizations and vias should always be
`
`avoided in capacitor design, or that such a design will not function as a capacitor,
`
`but rather asserts only a preference for using very thin dielectrics to increase
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`capacitance instead of buried metallizations. (Ex. 1016 ¶4) While Liebowitz
`
`states a preference for capacitor structures having thin dielectrics to minimize
`
`inductance, Liebowitz nonetheless recognizes that prior art SLCs did exist and
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`function with buried metallizations and vias. (See Ex. 1017 ¶¶10, 12; Ex. 1004,
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`1:46-49 (referencing “devices with a single dielectric layer and one or more
`
`electrodes buried within a multi-layer structure in which electrical contact(s) to
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`said buried layer(s) are brought to the surface through vias”); 2:8-9 (referencing
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`Inter Partes Review No.: IPR2016-00636
`U.S. Patent No. 6,661,639
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`“single buried layer devices conventionally manufactured with the same design as
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`
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`multi-layer devices”).) At most, Liebowitz describes buried metallizations as
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`having a particular drawback in an attempt to distinguish from the prior art. (Ex.
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`1016 ¶17.) However, simply because Liebowitz teaches that buried metallizations
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`have a particular drawback, this does not suffice to “teach away” from their use.
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`The law requires that the “prior art as a whole” must be viewed when
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`considering a patentee’s “teaching away” argument, not merely individual
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`references. Merck v. Gnosis, 808 F.3d 829, 834 (Fed. Cir. 2015). Even with added
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`inductance (which Petitioner will show below to be minimal), a POSITA would
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`have recognized that buried metallizations offered significant advantages in SLC
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`design. An indication in the prior art that an advantage or beneficial result
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`produced by the combination of references provides a strong rationale for
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`combining references. See In re Sernaker, 702 F.2d 989, 994-95 (Fed. Cir. 1983).
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`Buried metallizations allowed for increased and better controlled capacitance in a
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`manner that allows for increased strength and reliability. (Ex. 1016 ¶¶3-4; Ex.
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`1017 ¶¶12, 15.) In addition, buried metallizations allowed for “reduced size” of
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`SLCs, improved “manufacturability,” “use of better performing ceramic
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`materials,” and “better high frequency performance.” (Ex. 1016 ¶7; Ex. 1017
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`¶¶13-14 (citing Ex. 1015, 4.))
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`Inter Partes Review No.: IPR2016-00636
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`Thus, during the SLC design process, a designer could choose a specific benefit
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`(e.g., higher capacitance) while accepting a corresponding drawback (e.g., slightly
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`greater inductance or greater size). Such tradeoffs are obvious design choices that
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`would have been apparent to a POSITA. (Ex. 1016 ¶3; Ex. 1017 ¶¶12, 26-27.)
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`Accordingly, while Liebowitz describes an “inductance drawback” to buried
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`metallizations, a POSITA would understand that the benefit of increased
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`capacitance that can be achieved using buried metallizations may outweigh the
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`negative impacts of an increase in inductance. (Ex. 1016 ¶¶7, 9-17; Ex. 1017
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`¶¶11-12.) A POSITA would thus find it obvious to use buried metallizations in at
`
`least some designs. Id.
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`Furthermore, ultra-low inductance was not a primary concern of SLC designers
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`at the time of the ’639 patent. (Ex. 1017 ¶¶11-12; see also Ex. 1016 ¶¶9-15.)
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`Rather, a POSITA would have recognized that the small amount of inductance
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`added by buried metallizations was negligible (i.e., over an order of magnitude
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`lower) when compared to the inductance added by typical SLC mounting
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`techniques of the time. (Ex. 1017 ¶¶11, 16-18; Ex. 1016 ¶¶9-15). In addition, a
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`POSITA would have further recognized that multiple parallel vias could have been
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`used to the extent that a designer wished to minimize the inductance of the buried
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`metallizations even further. (Ex. 1016 ¶¶16-18; Ex. 1017 ¶19.) Accordingly, the
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`inductance added by buried metallizations would not have had a significant effect
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`Inter Partes Review No.: IPR2016-00636
`U.S. Patent No. 6,661,639
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`on the high frequency performance of an SLC and, contrary to Presidio’s reading
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`
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`of Liebowitz’ statements, would not have dissuaded a POSITA from utilizing
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`buried metallizations to obtain their other known benefits. (Ex. 1016 ¶¶14-15; Ex.
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`1017 ¶¶12-13.)
`
`Presidio argues that the combination of Liebowitz with Devoe would result in
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`“poorer” capacitor performance due to higher inductance. (POR, 32.) However,
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`the Federal Circuit addressed a similar argument in Arlington Indus. v. Bridgeport
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`Fittings, Inc. and held that “the Board did not conclude that the combination
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`would not function with metal clad cables (only that modification would be
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`needed …), and Arlington presents no evidence that the combination would in
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`fact be nonfunctional.” 2014 U.S. App. LEXIS 16697, at *17 (Fed. Cir. 2014)
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`(emphasis added). Here, Presidio presents no evidence that Petitioner’s proposed
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`“combination would in fact be nonfunctional.” To the contrary, using buried
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`metallizations (as in Devoe) in an SLC having composite electrodes (as in
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`Liebowitz) would render a device that is not only functional as a capacitor, but has
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`numerous advantages over traditional SLCs as discussed above. (Ex. 1017 ¶21.)
`
`For example, buried metallizations provide greater capacitance as well as “reduced
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`size” of SLCs, improved “manufacturability,” “use of better performing ceramic
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`materials,” and “better high frequency performance.” (Ex. 1016 ¶7; Ex. 1017
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`¶¶13-14; Ex. 1015, 4.) In addition, composite electrodes aid in providing
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`Inter Partes Review No.: IPR2016-00636
`U.S. Patent No. 6,661,639
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`mechanical strength to the dielectrics. (See Liebowitz (Ex. 1004), 2:64-4:18;
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`
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`Randall Depo. Tr. (Ex. 1018), 124:10-13).
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`Finally, contrary to the assertions of Presidio, the prosecution history of
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`Liebowitz further demonstrates that a POSITA would have found it obvious to
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`combine the teachings of Liebowitz and Devoe. For example, Devoe was cited by
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`the Examiner as anticipating many of the original claims of Liebowitz, thus
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`demonstrating that a POSITA would have considered the teachings of Devoe
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`relevant and indeed very similar to Liebowitz. (Ex. 2009, 125.) The Board in
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`MotivePower, Inc. v. Cutsforth, Inc., IPR2003-00274, faced a similar teaching
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`away argument as that presented in the present proceeding by Presidio. The Board
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`found that “as exemplified by the Examiner’s rejection, a person of ordinary skill
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`in the art would have considered a modification.” (IPR2003-00274; Paper 44 at 31
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`(emphasis added).) In addition, to overcome the Examiner’s application of Devoe
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`during prosecution, Liebowitz narrowed its original claims by specifying that a
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`face area of an electrode is externally exposed for making an electrical connection
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`“without a via.” (Ex. 2009, 138-139.) Thus, the original claims of Liebowitz were
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`broad enough to encompass the design of Devoe that included buried
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`metallizations and vias, further demonstrating that the original intent of Liebowitz
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`was not to exclude structures with buried metallizations and vias.
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`Inter Partes Review No.: IPR2016-00636
`U.S. Patent No. 6,661,639
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`For at least these reasons, combining the teachings of Liebowitz and Devoe—
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`specifically the combination of buried metallizations and vias with composite
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`electrodes—would result in a device that is functional for its intended purpose, that
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`retains the purported benefits of the unmodified devices, and that provides
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`numerous advantages. Whether the combination results in slightly poorer
`
`performance is wholly insufficient to establish that a POSITA would have avoided
`
`combining the teachings of Liebowitz and Devoe. Accordingly, Liebowitz does
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`not teach away from its combination with Devoe.
`
`B.
`
`The Combination of Liebowitz and Devoe Would Not Have Reduced
`Capacitance
`
`Presidio also argues that combining Liebowitz and Devoe would have reduced
`
`the active area of the SLC due to the inclusion of margins between the buried
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`metallization and the edge of the SLC, thereby reducing capacitance of the SLC.
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`(POR, 32.) This argument dramatically overstates the effect of margins on the
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`capacitance of an SLC, and also ignores common designs of prior art SLCs at the
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`time of the ’639 patent which already included margins—as to those devices, the
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`margins associated with the buried electrodes would have no effect on capacitance
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`at all. (Ex. 1016 ¶¶21-24; Ex. 1017 ¶¶22-24.)
`
`Devoe makes clear and it is undisputed that the use of buried metallizations
`
`decreases the distance between opposing electrodes, thereby increasing the
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`capacitance of the SLC. (Ex. 1016 ¶21; Ex. 1017 ¶22; Ex. 1005, 7:9-18.) Devoe
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`Inter Partes Review No.: IPR2016-00636
`U.S. Patent No. 6,661,639
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`discloses using buried metallizations to reduce the distance between opposing
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`
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`electrodes of an SLC from 5 mils to 0.5 mils, thereby increasing capacitance
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`roughly by a factor of 10. (Ex. 1016 ¶21.) Such an increase in capacitance more
`
`than makes up for any decrease in capacitance caused by the use of margins. (Id.)
`
`In addition, in his analysis of the effects of margins on capacitance, Dr. Randall
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`cherry-picks the smallest possible dimensions for an SLC together with large
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`margins, thereby ignoring much larger SLCs and smaller margins that were known
`
`in the art. (Ex. 1016 ¶¶22-24.) For example, Dr. Randall ignores that SLCs were
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`as big as 200 mils by 200 mils, and margins were as small as only 0.5-1 mil. (Id.)
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`Thus, any loss in capacitance by shaving a 1 mil margin or less off of a 200 mil
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`electrode would be minimal, and in any event would be more than offset by the
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`approximately 10 fold increase in capacitance achieved by the addition of a buried
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`metallization as taught in Devoe. (Id.)
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`Another point unaddressed by Presidio is that whatever losses in capacitance
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`that would result from the use of margins, such losses were clearly acceptable to a
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`POSITA in the industry in view of the advantages afforded by such margins. (Ex.
`
`1016 ¶24.) Indeed, SLCs having margins and/or using buried metallizations were
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`acceptable designs that were well known in the art at the time of the ’639 patent,
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`and the designs with margins were even commercially available at that time. (Ex.
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`1016 ¶¶24-25.) Contrary to the assertions of Dr. Randall (see Ex. 2001 ¶70), even
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`U.S. Patent No. 6,661,639
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`Liebowitz discloses embodiments that include margins. (Ex. 1017 ¶23; Ex. 1004,
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`4:1-5, Fig. 1b.) Thus, given the widespread acceptance of margins in SLCs, any
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`requirement for margins necessitated by buried metallizations would not have
`
`made the inclusion of buried metallizations in an SLC nonobvious to a POSITA.
`
`C. Liebowitz’s Designation of SLCs With Buried Metallizations as
`Multi-Layer Devices Does Not Render the Combination of Liebowitz
`and Devoe Nonobvious
`
`Presidio further argues that the combination of Liebowitz and Devoe would
`
`result in a “capacitor with multiple layers” instead of a “‘true’ single layer
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`capacitor,” and that Liebowitz teaches away from such a design. (POR, 32-34.)
`
`Presidio specifically asserts that the use of buried metallizations essentially results
`
`in multiple layers, which would increase inductance. (Id.) This argument is
`
`essentially a reiteration of Presidio’s initial teaching away argument in which
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`Presidio asserts that a POSITA would not include buried metallizations in an SLC
`
`because of the additional inductance. However, as discussed above in Section
`
`II(A), this argument has no merit. While Liebowitz states a preference for
`
`capacitor structures having a “true SLC” structure, Liebowitz recognizes that prior
`
`art SLCs did exist and function with buried electrodes and vias. Buried
`
`metallizations have significant advantages, and the single drawback alleged by
`
`Presidio (i.e., added inductance) is overblown and was not a primary concern to
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`POSITAs at the time of the ’639 patent. (Supra, section II(A).)
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`Inter Partes Review No.: IPR2016-00636
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`D. Lack of Simplicity of an Improved Design Does Not Negate a
`Motivation to Combine References
`Presidio further argues that Liebowitz is a much simpler device than Devoe
`
`(POR, 34-35). Presidio fails to cite case law supporting the proposition that a
`
`reference with a simpler device cannot be combined with another reference having
`
`a more complex one. To the contrary, the Federal Circuit has repeatedly held “it is
`
`not necessary that [references] be physically combinable to render obvious [a
`
`patent].” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983); see also In re Etter,
`
`756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (“[A]ssertions that Azure cannot be
`
`incorporated in Ambrosio are basically irrelevant, the criterion being not whether
`
`the references could be physically combined but whether the claimed inventions
`
`are rendered obvious by the teachings of the prior art as a whole.”).
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`Moreover, contrary to Presidio’s assertions, all the equipment and processes
`
`mentioned by Dr. Randall as required for the combination of Liebowitz and Devoe
`
`were standard and routine in the capacitor industry at the time of the ’639 patent.
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`(Ex. 1016 ¶26; Ex. 1017 ¶24.) Indeed, multi-layer capacitors and the processes for
`
`making them were well known at that time. (Id.) Because the equipment and
`
`process required for producing an SLC with buried metallization and composite
`
`electrodes were standard, well-known, and well-developed, the production of such
`
`SLCs would not have been difficult nor would it have had a significant effect on
`
`the cost and yield of the manufacturing process. (Ex. 1016 ¶29.)
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`Inter Partes Review No.: IPR2016-00636
`U.S. Patent No. 6,661,639
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`Furthermore, rather than describing technical difficulties with incorporating
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`buried metallizations into an SLC, the art at the time touted the “improved
`
`manufacturability” of devices with buried metallizations. (Ex. 1016 ¶27; Ex. 1015,
`
`4.) In addition, the ’639 patent calls for precisely the same structure as would
`
`result from the combination of Liebowitz and Devoe (i.e., an SLC with composite
`
`electrodes, buried electrodes, and vias), yet the ’639 patent does not mention any
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`difficulties in manufacturing nor does it teach how to overcome any such
`
`difficulties. (Ex. 1016 ¶28.)
`
`Still further, to produce the dielectric layers in its capacitors, Liebowitz
`
`proposes an onerous and difficult grinding process that would itself add significant
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`cost and complexity to the manufacturing process. (Ex. 1016 ¶30, Ex. 1017 ¶28.)
`
`Using buried metallizations as taught in Devoe instead of the ultra-thin dielectric
`
`layers of Liebowitz to increase capacitance would avoid the non-standard
`
`processes for forming the dielectric layers of Liebowitz, which is likely the reason
`
`that Liebowitz has not been commercialized. (Id.; see also Randall Depo. Tr. (Ex.
`
`1018), 78:4-5 (acknowledging that Liebowitz’ design has not been
`
`commercialized).)
`
`E. Whether Devoe Can be Bodily Incorporated Into Liebowitz is
`Irrelevant
`
`A consistent theme throughout Presidio’s Response is that a POSITA would not
`
`have been motivated to combine Liebowitz and Devoe, because such a
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`Inter Partes Review No.: IPR2016-00636
`U.S. Patent No. 6,661,639
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`combination would require modifications of Liebowitz that allegedly would
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`produce an inferior device with poor performance. In making these assertions,
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`Presidio implies that a POSITA would not have added buried metallizations to the
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`specific device of Liebowitz. It is important to note, however, that “[t]he test for
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`obviousness is not whether the features of a secondary reference may be bodily
`
`incorporated into the structure of the primary reference.... Rather, the test is what
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`the combined teachings of those references would have suggested to those of
`
`ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In
`
`re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983); In re Nievelt, 482 F.2d 965
`
`(CCPA 1973).
`
`In addition, Presidio’s position presumes that the rejection establishes
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`Liebowitz as the primary reference, to which Devoe must be added as a
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`“secondary” reference. Controlling case law shows this to be an improper
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`distinction. Application of Bush, 296 F.2d 491, 496 (C.C.P.A. 1961) (“[W]here a
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`rejection is predicated on two references each containing pertinent disclosure
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`which has been pointed out to the applicant, we deem it to be of no significance,
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`but merely a matter of exposition, that the rejection is stated to be on A in view of
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`B instead of on B in view of A, or to term one reference primary and the other
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`secondary.”); see also In re Mouttet, 686 F.3d 1322 (Fed. Cir. 2012) (same).
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`Presidio’s arguments are thwarted simply by viewing the rejection as Devoe in
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`U.S. Patent No. 6,661,639
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`view of Liebowitz—the difference is immaterial here because the proposed
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`combination only requires the composite electrodes of Liebowitz and the buried
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`metallization layers and vias of Devoe. As discussed in the Petition, a POSITA
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`would understand Liebowitz to disclose an SLC with electrodes made of a
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`“ceramic metal composite.” (See Petition, 14-17; see also Ex. 1003, 29-40.) A
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`POSITA would further understand Devoe to disclose the use of buried
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`metallizations to increase capacitance of an SLC. (See Ex. 1005, Figs. 1a-1h, 5,
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`11; see also Petition, 17-18; Ex. 1003, 33-35.) It would have been obvious to a
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`POSITA to use buried metallizations in an SLC with composite electrodes to
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`increase the capacitance of the SLC. (See Petition, 19-23; see also Ex. 1003, 29-
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`40.)
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`That buried metallizations may not have been used in the specific device of
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`Liebowitz due to the very thin dielectric layers in some embodiments of its device
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`is irrelevant, because larger dielectric thicknesses for standard SLCs were well-
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`known, and even Liebowitz discusses embodiments where the dielectric thickness
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`need only be less than 0.004” (i.e., 4 mils, which is nearly the thickness of
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`conventional SLC dielectrics). See Ex. 1004, 2:11-14. Indeed, the dielectric
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`thicknesses described in the ’639 patent and Devoe (not including the buried
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`metallizations) are much larger than that of Liebowitz. (Ex. 1016 ¶¶5-6.)
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`Furthermore, Liebowitz discloses embodiments having dielectric thicknesses (e.g.,
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`Inter Partes Review No.: IPR2016-00636
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`near 4 mils) similar to those of Devoe, and Presidio fails to provide any
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`
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`explanation as to why buried electrodes could not have been used in with these
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`more traditional dielectric thicknesses disclosed in Liebowitz. (Id.) A POSITA
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`would know that capacitors with larger dielectric thicknesses would benefit from
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`buried metallizations to increase the capacitance, regardless of whether a small
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`increase in inductance accompanied that benefit. (Id.)
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`III. SinghDeo Combined with Liebowitz, Devoe and Veater Renders Claims
`2, 9 and 20 Obvious
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`Presidio argues against this combination on the basis that SinghDeo is non-
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`analogous art and discloses compositions and processes that a POSITA would not
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`be motivated to use for SLCs. (POR, 25-29, 36-40.) The test for determining
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`whether prior art is analogous asks: “(1) whether the art is from the same field of
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`endeavor, regardless of the problem addressed, and (2) if the reference is not
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`within the field of the inventor’s endeavor, whether the reference still is reasonably
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`pertinent to the particular problem with which the inventor is involved.” In re
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`Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992). SinghDeo meets both prongs.
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`As explained by Dr. Chung, SinghDeo is directed to electronic devices in
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`general, and capacitors are certainly electronic devices. (Ex. 2016 ¶31.)
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`Regarding its specifically disclosed electrically conductive composites, SinghDeo
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`goes on to state that:
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`Such an electrically conductive composite is believed to have wide
`application in areas outside the electronic packaging field such as in
`engineered composites and electronic composites where electrical
`conductivity is desired.
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`(Ex. 1007, 9:34-38.) By teaching such broad applications for its technology,
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`SinghDeo is properly considered to be within the same field of endeavor as the
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`’639 patent.
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`Presidio’s numerous case cites (POR at 25-26) are at most directed to the first
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`prong of Clay, while ignoring the second prong’s inquiry into the prior art’s
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`relevance to the “problem” that the inventors “solved.” While the ’639 patent
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`barely mentions glass or the reasons for including it (Ex. 1001, 10:27-34), both
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`experts agree that glass is a well-known sintering aid (Ex. 2016 ¶34; Ex. 1018,
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`34:23–36:22). This is exactly the purpose identified by SinghDeo for
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`incorporating glass into the ceramic-metal composite: “The glassy phase functions
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`to bind the ceramic and metallic particles together.” (Ex. 1007, 6:60-61.)
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`In addition, SinghDeo teaches that ceramic-glass-metal composites provide
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`numerous advantages relevant to the ’639 patent, including easily tailored physical
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`properties, good substrate strength, firing (i.e., sintering) at reduced temperatures,
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`and, perhaps most importantly, the ability to incorporate sufficient metal particles
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`to render the composite electrically conductive. (Ex. 1016 ¶32.) A POSITA
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`would have readily recognized the advantages of incorporating glass into a ceramic
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`composite, such as those called for in the ’639 patent and Liebowitz, (id. ¶34),
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`
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`which even Dr. Randall admits (Ex. 1018, 29:17-20; 31:11-23; 32:24-25; 33:1-11;
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`34:19-22).
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`Presidio also attempts to distinguish the processing steps, conditions, and
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`materials of SinghDeo to discredit any motivation for combining SinghDeo with
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`the other references. (POR, 27-29, 37-39.) These arguments fail for numerous
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`reasons. First, SinghDeo lists TiO2 as one of its ceramic materials, (Ex. 1007,
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`6:29-32), which is identically listed as a preferred ceramic in Liebowitz (Ex. 1004,
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`3:27-30, 7:26-29). Second, the “hot forging and hot pressing” of SinghDeo are
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`indistinguishable from the “sintering” of the ’639 patent, where the application of
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`pressure and use of molds are merely options, depending on the specific purpose
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`sought by the POSITA. (Ex. 1016 ¶¶33,35-37.) Lastly, Dr. Randall readily
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`admitted that a POSI