`571.272.7822
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`
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`Paper No. 8
` Filed: April 12, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`MICRON TECHNOLOGY, INC.,
`Petitioner,
`
`v.
`
`LIMESTONE MEMORY SYSTEMS LLC,
`Patent Owner.
`_____________
`
`Case IPR2016-00094
`Patent 5,894,441
`_____________
`
`
`
`Before BART A. GERSTENBLITH, BARBARA A. PARVIS, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`I.
`
`INTRODUCTION
`
`Background
`A.
`Micron Technology, Inc. (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) requesting institution of inter partes review of claims 1–3 and 5–15
`of U.S. Patent No. 5,894,441 (Ex. 1001, “the ’441 patent”). Limestone
`
`Apple – Ex. 1011
`Apple Inc., Petitioner
`1
`
`
`
`Memory Systems LLC (“Patent Owner”) filed a Preliminary Response
`(Paper 7, “Prelim. Resp.”).
`In its Preliminary Response, Patent Owner indicates that it has
`disclaimed claims 1–3 and 5 under 35 U.S.C. § 253(a). Prelim. Resp. 10.
`As evidence of that disclaimer, Patent Owner filed an Acknowledgement
`Receipt. Ex. 2001. 37 C.F.R. § 42.107(e) provides: “The patent owner may
`file a statutory disclaimer under 35 U.S.C. 253 (a) in compliance with
`§ 1.321(a) of this chapter, disclaiming one or more claims in the patent.”
`Patent Owner’s disclaimer is in compliance with 37 C.F.R. § 1.321(a).
`Accordingly, we decline to institute an inter partes review as to claims 1–3
`and 5.
`Furthermore, upon consideration of the Petition, and applying the
`standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a
`reasonable likelihood that Petitioner would prevail with respect to at least
`one challenged claim, we deny the Petition and decline to institute an inter
`partes review of claims 6–15 of the ’441 patent.
`
`Related Proceedings
`B.
`The parties indicate that the ’441 patent is asserted against Petitioner
`in Limestone Memory Sys. LLC v. Micron Tech., Inc., No. 8:15-cv-00278
`(C.D. Cal.). Pet. 2; Paper 6, 2. The parties indicate that other proceedings
`may be related. Pet. 2–3; Paper 6, 2–3.
`
`Real Parties-in-Interest
`C.
`The Petition identifies Micron Technology, Inc. as the real party-in-
`interest. Pet. 2. Patent Owner identifies Limestone Memory Systems LLC
`and Acacia Research Group LLC as the real parties-in-interest. Paper 6, 1.
`
`2
`
`
`
`The References
`D.
`Petitioner relies on the following references:
`U.S. Patent No. 5,270,975, issued December 14, 1993 (Ex. 1005,
`“McAdams”); and
`Japanese Patent Application No. H06-052696, published February 25,
`1994 (Ex. 1006, “Minami”).1
`
`The Asserted Grounds of Unpatentability
`E.
`Petitioner challenges the patentability of claims 6–15 of the
`’441 patent on the ground that they are unpatentable, under 35 U.S.C.
`§ 103(a), over McAdams and Minami. Pet. 4. Petitioner supports its
`challenge with a declaration executed by Dr. R. Jacob Baker on October 22,
`2015 (Ex. 1003).
`
`The ’441 patent
`F.
`The ʼ441 patent is directed to a “SEMICONDUCTOR MEMORY
`DEVICE WITH REDUNDANCY CIRCUIT.” Ex. 1001, [54]. The
`’441 patent explains:
`The semiconductor memory device according to this
`invention comprises a plurality of column selection lines, at least
`one redundant column selection line, a column decoder which
`activates one line out of the plurality of column selection lines in
`response to a column address a first circuit which generates a
`detection signal when the column address of a defect-related
`column selection line is supplied, and a second circuit which
`receives at least a part of a row address and activates the
`redundant column selection line in response to at least a part of
`the row address and the detection signal. With this arrangement,
`when a defect occurs in one bit, instead of replacing all of the
`
`1 Unless otherwise noted, citations are to the certified English-language
`translation, submitted as part of Exhibit 1006.
`
`3
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`
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`many bit lines included in the column selection line to which the
`defective bit line belongs, it is possible to relieve a larger number
`of defective bit lines using a single redundant column selection
`line by replacing only a part of these bit lines.
`Id. at 2:13–28.
`
`Illustrative Claim
`G.
`Claim 6 is the remaining independent claim challenged in this
`proceeding. Claims 7–15 depend, directly or indirectly, from claim 6.
`Independent claim 6 is illustrative of the claimed subject matter and is
`reproduced below with emphasis on the element that is the focus of our
`analysis.
`6.
`
`A semiconductor memory device comprising:
`a plurality of word lines including at least first and second
`word lines;
`a plurality of bit lines including at least first and second bit
`
`lines;
`
`a plurality of redundant bit lines including at least first and
`second redundant bit lines;
`a plurality of memory cells each of which is disposed on
`intersections of said word lines and bit lines;
`a plurality of redundant memory cells each of which is
`disposed on intersections of said word lines and redundant bit
`lines;
`
`a plurality of column selection lines including at least a
`first column selection line; said first and second bit lines being
`selected when said first column selection line is activated;
`a redundant column selection line; said first and second
`redundant bit lines being selected when said redundant column
`selection line is activated;
`a column decoder activating said first column selection
`line in response to a first column address when said first word
`line is activated; and
`
`4
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`
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`a column redundancy decoder activating said redundant
`column selection line in response to said first column address
`when said second word line is activated.[2]
`Ex. 1001, 13:55–14:13 (emphasis added).
`
`CLAIM CONSTRUCTION
`II.
`Legal Standard
`A.
`Petitioner proposes that we construe the claim term “transfer gate” to
`mean “logic that transfers the logic value of a signal.” Pet. 10. For the
`purposes of this Decision, we are not persuaded that “transfer gate” requires
`express construction, because even if we were to adopt Petitioner’s proffered
`construction, Petitioner has not established that it is reasonably likely to
`succeed in showing that the challenged claims are unpatentable. See Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
`(“[O]nly those terms need be construed that are in controversy, and only to
`the extent necessary to resolve the controversy.”).
`
`III. ANALYSIS
`A. Obviousness of Claim 6 over McAdams and Minami
`Petitioner asserts that a combination of the teachings of McAdams and
`Minami would have rendered the subject matter of claim 6 obvious to one of
`ordinary skill in the art at the time of the invention. Pet. 26–44. The
`Petition includes discussion identifying where McAdams and Minami
`allegedly teach or suggest the elements of each challenged claim. Id.
`
`2 We refer to this limitation as “the column redundancy decoder limitation.”
`
`5
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`
`
`Principles of Law
`1.
`A claim is unpatentable, under § 103(a), if the differences between the
`claimed subject matter and the prior art are such that the subject matter, as a
`whole, would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including: (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of skill in
`the art; and (4) where in evidence, so-called secondary considerations.
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`An invention “composed of several elements is not proved obvious
`merely by demonstrating that each of its elements was, independently,
`known in the prior art.” KSR, 550 U.S. at 418. Instead, a determination of
`unpatentability on a ground of obviousness must include “‘articulated
`reasoning with some rational underpinning to support the legal conclusion of
`obviousness.’” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
`The obviousness evaluation “should be made explicit,” and it “can be
`important to identify a reason that would have prompted a person of
`ordinary skill in the relevant field to combine the elements in the way the
`claimed new invention does.” Id.
`
`2. McAdams
`McAdams is directed to a semiconductor memory device and in
`particular to “devices which include repair circuitry for eliminating defects
`in memory devices.” Ex. 1005, 1:9–13. McAdams explains that “each data
`
`6
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`
`
`block 12 is partitioned into sixteen sub-blocks 14.” Id. at 5:12–13.3
`McAdams further explains:
`Within each sub-block 14, there are 256 row or word
`lines R and 256 column select lines Ys. For simplicity of
`illustration, only one row line R and one column select line Ys
`are shown in FIG. 3. A row line is selectable based on row
`address information input to a one of sixteen row decoder
`stage 16 and a one of 256 row decoder stage 18. In each data
`block 12, column address decoders 20 turn on a select line Ys to
`control read/-write data transfer for two columns.
`Id. at 5:39–47.
`
`3. Minami
`Minami is directed to semiconductor memory devices providing
`defect rescue functions of memory cells and peripheral circuits.
`Ex. 1006 ¶ 1. Minami explains:
`The memory cell array is comprised of memory cells
`arrayed in a matrix, four regular bit lines BLJ (BL0, BL1, BL2,
`BL3) and a spare bit line SBL, in addition to comprising four
`regular word lines (WL0, WL1, WL2, WL3). The regular memory
`cells Cij selected by means of the word line WLi and the regular
`bit line BLj, and the spare memory cell SCi selected by the word
`line WLi and the spare bit line SBL. The row address is input
`from the address lines A0,/A0, A1,/A1 and one of the regular bit
`lines is selected by means of the column decoders CD0, CD1, CD2
`and CD3 in correspondence with the input address.
`Id. ¶ 22.
`
`Level of Ordinary Skill in the Art
`4.
`With regard to the level of ordinary skill in the art, we determine that
`no express finding is necessary, on this record, and that the level of ordinary
`skill in the art is reflected by the prior art of record. See Okajima v.
`
`3 Bold omitted from reference numerals in patents throughout.
`
`7
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`
`
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d
`1573, 1579 (Fed. Cir. 1995).
`
`The Column Redundancy Decoder Limitation
`5.
`Regarding the last limitation recited in claim 6, i.e., the column
`redundancy decoder limitation, the Petition includes the following
`contention:
`This limitation simply covers the concept of using a
`redundant bit line to replace only part of a column (a segment).
`Specifically, while the first column address and first word line
`activates the normal selection line, the same first column address
`and second word line activates the redundant column selection
`line. MICRON-1003, Baker Decl., Appx. A at claim [6.6].
`Pet. 42 (emphasis in Petition). Regarding the first sentence, we note that
`Petitioner does not propose a construction for any part of the column
`redundancy decoder limitation. See id. at 10–11 (proposing a construction
`for only ‘transfer gate’ recited in claims 3 and 13). Petitioner’s contention
`regarding what the limitation purportedly “covers” (id. at 42) is not a
`proposed construction. See 37 C.F.R. § 42.104 (b)(3) (explaining that the
`Petition must set forth “[h]ow the challenged claim is to be construed”). We
`address Petitioner’s reliance upon Appendix A of Dr. Baker’s Declaration
`after considering other arguments and citations provided in the Petition.
`The Petition next includes contentions relating to certain of
`McAdams’s teachings. For limitations recited in claim 6 that precede the
`column redundancy decoder limitation, the Petition includes a series of
`figures from McAdams that are annotated purportedly to show the
`limitations of claim 6. To provide context, these annotations are
`summarized in the table below. In the pages of the Petition identified in the
`table below, McAdams’s Figure 2, which illustrates a data block that is
`
`8
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`
`
`partitioned into sixteen sub-blocks 14 (Ex. 1005, 5:12–13), is reproduced on
`the left-hand side of the page. See, e.g., Pet. 34. McAdams’s Figure 3,
`which illustrates a partial view of a sub-block (id. at 4:31–32), is reproduced
`twice on the right-hand side of the page. See, e.g., Pet. 34.
`Element of Claim 6 (recited in full)
`Contentions in the Petition
`a column redundancy decoder
`Petitioner asserts that a first
`activating said redundant column
`redundant column select line YRS is
`selection line
`annotated in gold. Pet. 39.
`in response to said first column
`Petitioner asserts that the first
`address4
`column selection line is annotated in
`navy blue. Pet. 37–38.
`
`Petitioner asserts that the first word
`line is in the top sub-block and is
`annotated in red. Pet. 33–34.
`Petitioner asserts that the second
`word line is in the bottom sub-block
`and is annotated in purple. Pet. 34.
`Regarding the column redundancy decoder limitation, the Petition
`includes the following contention based on McAdams:
`McAdams discloses column repair decoder circuits that
`are “each connected to a repair column and each programmable
`with column and row address information corresponding to a
`section of an array column containing a defective memory cell.
`With this programming, memory cells in a segment of a repair
`column can replace memory cells in a segment of an array
`column containing a defective memory cell.” Id. at 3:51-58. The
`redundant column select lines “[are] capable of replacing
`multiple defective column portions with multiple redundant
`
`when said second word line is
`activated
`
`
`
`4 Although Petitioner does not annotate a particular element corresponding
`to “said first column address,” we note that “said first column address
`derives antecedent basis from the following: “activating said first column
`selection line in response to a first column address when said first word line
`is activated.”
`
`9
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`
`
`column portions which are enabled by the same redundant
`column select line.” Id. at 3:12-16. In other words, depending on
`the row address (first or second word line), activation of the
`redundant selection line will occur, e.g., if the column and second
`word line address correspond to a defective cell.
`Pet. 43.
`The indication that each decoder is programmable “with column and
`row address information corresponding to a section of an array column
`containing a defective memory cell” (id.), does not by itself indicate that the
`redundant column selection line is activated in response to the first column
`address (which is the same address that activates the first column selection
`line) when “said second word line is activated,” as recited in claim 6.
`Additionally, the final sentence, shown above in the block quote, of
`Petitioner’s contention is ambiguous because it refers to “first or second
`word line” and “if the column,” without specifying which one. Further, the
`final sentence is not supported sufficiently by the immediately preceding
`citations and does not include its own evidentiary citation.
`The Petition also includes the following contention:
`As shown in Figure 5, the output of the fusible comparator
`decoders 40 (which detects a defective cell by using the row and
`column address) is provided to the YRS enable logic 50 that is
`then provided to the redundant column decoder that activates the
`redundant column selection lines if the address (e.g., first column
`address and second word line) matches a defective cell.
`Id. at 7:57-8:7, 8:44-61 (“When one decoder in a group SSi
`outputs a logic high signal the select enable logic circuit 50 for
`that group outputs a logic high signal, corresponding to the
`associated redundant select line YRSi.
` With appropriate
`addressing provided to the decoders 40 and 42, each select enable
`logic circuit 50 provides a logic-high signal to one redundant
`select line YRS in each data block.”).
`Pet. 43–44.
`
`10
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`
`
`The reference to “appropriate addressing” (id.) alone is vague, and
`does not indicate that the redundant column selection line is activated in
`response to the first column address when the second word line is activated,
`as recited in claim 6. We are not persuaded that these additional contentions
`resolve the deficiency noted above.
`The Petition apparently acknowledges the deficiency, stating the
`following: “[w]hat McAdams does not explicitly disclose is whether
`activating the column redundancy decoder occurs when a word line is
`activated.” Id. at 44. The Petition purportedly addresses the deficiency as
`follows: “this would have been obvious to a person of ordinary skill in the
`art in view of the disclosures in Minami for the same reasons discussed with
`reference to the previous limitation.” Id. (citing Section 10.2.6 claim [6.5];
`Ex. 1003 Appx. A at claim [6.6]). The reference to “the previous limitation”
`does not provide sufficient specificity as to which of Petitioner’s previous
`contentions purportedly relate to the column redundancy decoder limitation
`and specifically why this limitation would have been obvious.
`Accordingly, we determine that the Petition does not show sufficiently
`that the combination of McAdams and Minami teaches the column
`redundancy decoder limitation.
`As noted above, Petitioner also relies on the Declaration of Dr. Baker
`and, in particular, Appendix A thereto. We determine that Petitioner’s
`reliance on Appendix A of Dr. Baker’s Declaration does not resolve the
`deficiency in the Petition for the following reasons.
`First, Appendix A includes many references to other contentions and
`does not provide sufficient specificity with respect to the column
`redundancy decoder limitation. The portion of Appendix A of the
`
`11
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`
`
`Declaration of Dr. Baker cited in the Petition that pertains to the column
`redundancy decoder limitation is five pages, beginning with the page shown
`below.
`
`
`
`Ex. 1003, Appx. A.
`As shown above, this portion of Appendix A begins with a reference
`to McAdams’s teachings regarding claims 6 through 8 and claim 14.
`Additionally, as can be seen above, the contentions with respect to “[i]n
`response to second row address, the second word line is activated,” do not
`include evidentiary citations and apparently rely on arguments directed to
`other elements of claims 6, 7, 8, and 14. The contentions pertaining to other
`elements of claims 6, 7, 8, and 14 are found on pages A-24 through A-54
`and A-70 through A-72. “A brief must make all arguments accessible to the
`
`12
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`
`
`judges, rather than ask them to play archeologist with the record.” DeSilva
`v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999). With respect to other
`elements of claims 6, 7, 8, and 14, Appendix A does not specify sufficiently
`which of the other contentions relate to the column redundancy decoder
`limitation and does not provide enough context to determine whether any
`other contentions relate to the column redundancy decoder limitation.
`Second, the portion of Appendix A that pertains to the column
`redundancy decoder limitation includes conclusory statements regarding the
`knowledge of one of ordinary skill in the art. See, e.g., Ex. 1003,
`Appx. A-47, A-48. “Expert testimony that does not disclose the underlying
`facts or data on which the opinion is based is entitled to little or no weight.”
`See 37 C.F.R. § 42.65(a).
`We further find that the portion of Appendix A that pertains to the
`column redundancy decoder limitation includes evidentiary citations that are
`similar to those specified in the Petition. For the reasons discussed above,
`that evidence is not persuasive to show sufficiently that the combination of
`McAdams and Minami teaches the column redundancy decoder limitation.
`Accordingly, we determine that Petitioner has not shown sufficiently
`that the combination of McAdams and Minami teaches the column
`redundancy decoder limitation.
`
`Reasoning to Support Conclusion of Obviousness
`6.
`The Petition includes the following contention: “[o]ne of ordinary
`skill in the art would have been motivated to combine McAdams and
`Minami” because they “address the same problem” and “adopt similar
`solutions.” Pet. 27 (citing Ex. 1003 ¶¶ 71–79; Ex. 1005, 3:3–7;
`Ex. 1006 ¶ 17). The Petition includes further contentions pertaining to the
`
`13
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`
`
`similarity of the problems and solutions of McAdams and Minami, as well
`as general interoperability of components used in the circuits. Id. (citing
`Ex. 1003 ¶¶ 75, 76; Ex. 1005, 3:3–7, 3:12–16, 6:27–30; Ex. 1006 ¶¶ 17, 22,
`23, 28, 29 Abstract.).
`Although the similarities of McAdams and Minami are
`considerations, as well as interoperability of components, in this case, we are
`not persuaded that these alone are sufficient to show what teachings
`Petitioner contends should be combined or modified and, without more, do
`not provide an articulated reasoning with some rational underpinning to
`support the legal conclusion of obviousness.
`The Petition includes the following additional contention “one of
`ordinary skill in the art would also have found the combination of McAdams
`and Minami to be merely a simple substitution of prior art elements
`according to known methods that would yield predictable results.” Id. at 28.
`The Petition includes the following more specific contention: “YRS enable
`logic” of McAdams “could be substituted for or modified to include the
`NMOS transistors T0–T3 described in Minami” (also referred to as transfer
`gates). Id. at 28–29 (citing Ex. 1005, 8:48–61; Ex. 1006 ¶ 23;
`Ex. 1003 ¶ 77). According to the Petition, the proposed substitution would
`improve redundancy and lower power consumption. Id. at 29 (citing
`Ex. 1003 ¶ 78).
`The Petition includes citations to the Declaration of Dr. Baker. We
`have reviewed Dr. Baker’s testimony (Ex. 1003 ¶¶ 71–79), which is similar
`to the contentions in the Petition.
`Patent Owner contends that “[t]he YRS enable logic 50 in McAdams
`applies to multiple memory array blocks” (Prelim. Resp. 25), whereas
`
`14
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`
`
`“Minami’s transistors T0–T3 and column decoders CD0–CD3 are wired to
`individual wordlines in a single memory array” (id. at 27 (citation omitted)).
`In particular, Patent Owner points to McAdams’s teaching that “all of the
`decoders 40 in a particular group SSi are wired to turn on the same
`redundant select line YRSi (i=1,N) in all of the data blocks.” Id. at 25–26
`(citing Ex. 1005, 8:8–16) (emphasis in Preliminary Response). Patent
`Owner provides annotations to Figure 5 to show how one YRS enable logic
`block (shown in red) connects to four data blocks. Id. at 26. Additionally,
`Patent Owner points to Minami’s teaching that “[t]he regular memory cells
`Cij selected by means of the word line WLi and the regular bit line BLj, and
`the spare memory cell SCi selected by the word line and the spare bit line
`SBL.” Id. at 27 (citing Ex. 1006 ¶ 22); see also id. (illustrating an annotated
`Figure 1 of Minami).
`Upon review of the contentions in the Petition, and the evidence cited
`therein, including the testimony of Dr. Baker, as well as the contentions in
`the Preliminary Response, we are not persuaded that the Petition
`demonstrates sufficiently that the combination of the teachings discussed
`above is nothing more than a simple substitution. We also do not find that
`Petitioner’s contentions are sufficient to show what additional teachings
`Petitioner contends should be combined or modified so as to demonstrate
`that every element, arranged as recited in claim 6, would have been obvious
`over the combined teachings of McAdams and Minami.
`Petitioner additionally contends that one of ordinary skill in the art
`would have been motivated to combine the teachings of McAdams and
`Minami because the result would improve redundancy in McAdams, which
`would result in lower power consumption. Pet. 29 (citing Ex. 1003 ¶ 78).
`
`15
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`
`
`McAdams, however, already teaches the concept of redundancy and the
`Petition does not specify sufficiently how redundancy would be improved.
`The Petition includes a citation to Dr. Baker’s Declaration, who also testifies
`that redundancy is improved without sufficient further specificity. Dr. Baker
`does not disclose sufficiently the underlying facts or data on which his
`opinion is based. See 37 C.F.R. § 42.65(a). Accordingly, we determine that
`Petitioner does not provide sufficiently an articulated reasoning with some
`rational underpinning to support the legal conclusion of obviousness.
`
`Summary
`7.
`Petitioner has not demonstrated a reasonable likelihood that it would
`prevail in showing that claim 6 of the ’441 patent is unpatentable.
`
`B. Obviousness of Claims 7–15 over McAdams and Minami
`Petitioner asserts that a combination of the teachings of McAdams and
`Minami would have rendered the subject matter of claims 7–15 obvious to
`one of ordinary skill in the art at the time of the invention. Pet. 44–60. Each
`of claims 7–15 depends, directly or indirectly, from independent claim 6.
`Accordingly, we determine that Petitioner has not demonstrated a reasonable
`likelihood that it would prevail in showing that claims 7–15 of the
`’441 patent are unpatentable.
`
`IV. ORDER
`For the foregoing reasons, it is:
`ORDERED that the Petition is denied and no inter partes review is
`instituted.
`
`
`16
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`
`
`PETITIONER:
`Jeremy Jason Lang
`Justin Constant
`Weil, Gotshal & Manges LLP
`jason.lang@weil.com
`justin.constant@weil.com
`
`PATENT OWNER:
`Nicholas T. Peters
`Paul Henkelmann
`Fitch Even Tabin & Flannery LLP
`limestoneipr@fitcheven.com
`
`17