Trials@uspto.gov
`571-272-7822
`
` Paper 8
` Entered: May 16, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DUK SAN NEOLUX CO., LTD.,
`Petitioner,
`
`v.
`
`IDEMITSU KOSAN CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2016-00148
`Patent 9,056,870 B2
`____________
`
`Before JUSTIN T. ARBES, BRIAN P. MURPHY, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`DECISION
`Instituting of Inter Partes Review
`37 C.F.R. § 42.108
`
`I. INTRODUCTION
`
`Petitioner, Duk San Neolux Co., Ltd., filed a Petition requesting an
`
`inter partes review of claims 1, 3, 4, and 14–26 of U.S. Patent No. 9,056,870
`
`B2 (Ex. 1001, “the ’870 patent”). Paper 1 (“Pet.”). Patent Owner Idemitsu
`
`Kosan Co., Ltd., filed a Preliminary Response. Paper 5 (“Prelim. Resp.”).
`
`Idemitsu Ex. 2001, pg. 1
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`IPR2016-00148
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`We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter
`
`partes review may not be instituted “unless . . . the information presented in
`
`the petition . . . shows that there is a reasonable likelihood that the petitioner
`
`would prevail with respect to at least 1 of the claims challenged in the
`
`petition.”
`
`
`
`Upon consideration of the Petition and the Preliminary Response, we
`
`conclude the information presented does show there is a reasonable
`
`likelihood that Petitioner would prevail in establishing the unpatentability of
`
`claims 1, 3, 4, and 14–26 of the ’870 patent. Accordingly, we authorize an
`
`inter partes review.
`
`A. The ’870 Patent (Ex. 1001)
`
`The ’870 patent, titled “Material for Organic Electroluminescence
`
`Device and Organic Electroluminescence Device Using the Same” issued on
`
`June 16, 2015 based on U.S. Patent Application No. 13/173,486, filed June
`
`30, 2011, which claims priority to U.S. Patent Application No. 12/253,586,
`
`filed October 17, 2008.
`
`B. Illustrative Claims
`
`Petitioner challenges claims 1, 3, 4, and 14–26. Claim 1 is the sole
`
`independent claim at issue and is reproduced below:
`
`1. A material for an organic electroluminescence device
`represented by the following general Formula (1) or (2):
`
`2
`
`Idemitsu Ex. 2001, pg. 2
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`
` where:
`
`
`
`Ar1 and Ar3 each independently represent a substituted benzene group
`or an unsubstituted benzene group, and Ar2 represents a
`substituted benzene group, an unsubstituted benzene group, a
`substituted naphthalene group, or an unsubstituted naphthalene
`group, provided that, Ar1, Ar2, and Ar3 each may have one
`substituent Y or multiple substituents Ys, in the case of multiple
`substituents Ys,
`
`the substituent Ys may be different from each other, Y represents an
`alkyl group having 1 to 20 carbon atoms, a substituted or
`unsubstituted cycloalkyl group having a ring formed of 3 to 20
`carbon atoms, an alkoxy group having 1 to 20 carbon atoms, an
`aralkyl group having 7 to 24 carbon atoms, a silyl group having 3
`to 20 carbon atoms, a substituted or unsubstituted aromatic
`hydrocarbon group having a ring formed of 6 to 24 carbon atoms,
`or a substituted or unsubstituted aromatic heterocyclic group
`which has a ring formed of 3 to 24 atoms and which is linked
`withAr1, Ar2, or Ar3 through a carbon-carbon bond;
`
`X1 represents N-R1;
`
`X2 represents O or S;
`
`X3 and X4 each independently represent O or S;
`
`R1 represents a substituted aromatic hydrocarbon group wherein the
`aromatic hydrocarbon group is selected from the group consisting
`of phenyl, naphthyl, biphenylyl, terphenylyl, fluorenyl,
`
`3
`
`Idemitsu Ex. 2001, pg. 3
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`phenanthrenyl, triphenylenyl, perylenyl, chrysenyl, fluoranthenyl,
`benzofluorenyl, benzotriphenylenyl, benzochrysenyl and
`anthracenyl, and wherein the substituent of said substituted
`aromatic hydrocarbon group is an aromatic heterocyclic group
`having a ring formed of 3 to 40 atoms; or
`
`R1 represents a substituted or unsubstituted aromatic heterocyclic
`group having a ring formed of 3 to 24 atoms, wherein the
`substituent of said substituted aromatic heterocyclic group is
`selected from the group consisting of an unsubstituted phenyl
`group, an aromatic heterocyclic group having a ring formed of 3
`to 40 atoms, an amino group substituted with an aromatic
`hydrocarbon group having a ring formed of 6 to 40 carbon atoms,
`an ester group having an aromatic hydrocarbon group having a
`ring formed of 6 to 40 carbon atoms, a cyano group, a nitro group
`and a halogen atom;
`
`o and p each represent 0, q represents 1, s represents 1, and n
`represents 2, 3, or 4, and the material represented by the formula
`(2) comprises a dimer using L3 as a linking group for n=2, a trimer
`using L3 as a linking group for n=3, or a tetramer using L3 as a
`linking group for n=4;
`
`L1 represents a single bond, an alkyl or alkylene group having 1 to 20
`carbon atoms, a substituted or unsubstituted cycloalkyl or
`cycloalkylene group having a ring formed of 3 to 20 carbon
`atoms, a monovalent or divalent silyl group having 2 to 20 carbon
`atoms, a substituted or unsubstituted, monovalent or divalent
`aromatic hydrocarbon group having a ring formed of 6 to 24
`carbon atoms, or a substituted or unsubstituted, monovalent or
`divalent aromatic heterocyclic group which has a ring formed of 3
`to 24 atoms and which is linked with Ar1 through a carbon-carbon
`bond;
`
`L2 represents a single bond, an alkyl or alkylene group having 1 to 20
`carbon atoms, a substituted or unsubstituted cycloalkyl or
`cycloalkylene group having a ring formed of 3 to 20 carbon
`atoms, a monovalent or divalent silyl group having 2 to 20 carbon
`atoms, a substituted or unsubstituted, monovalent or divalent
`aromatic hydrocarbon group having a ring formed of 6 to 24
`carbon atoms, or a substituted or unsubstituted, monovalent or
`
`4
`
`Idemitsu Ex. 2001, pg. 4
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`divalent aromatic heterocyclic group which has a ring formed of 3
`to 24 atoms and which is linked with Ara through a carbon-carbon
`bond, provided that, when both X1 and X2 represent CR2R3, o and
`p each represent 0, q represents 1, and both L1 and L2 represent
`substituted or unsubstituted, monovalent or divalent aromatic
`hydrocarbon groups each having a ring formed of 6 to 24 carbon
`atoms, or when both X1 and X3 represent CR2R3, p and q each
`represent 0, o represents 1, and both L1 and L2 represent
`substituted or unsubstituted, monovalent or divalent aromatic
`hydrocarbon groups each having a rings formed of 6 to 24 carbon
`atoms, a case where L1 and L2 are simultaneously linked at para
`positions with respect to Ar2 is excluded;
`
`when n represents 2, L3 represents a single bond, an alkylene group
`having 1 to 20 carbon atoms, a substituted or unsubstituted
`cycloalkylene group having a ring formed of 3 to 20 carbon
`atoms, a divalent silyl group having 2 to 20 carbon atoms, a
`substituted or unsubstituted, divalent aromatic hydrocarbon group
`having a ring formed of 6 to 24 carbon atoms, or a substituted or
`unsubstituted, divalent aromatic heterocyclic group which has a
`ring formed of 3 to 24 atoms and which is linked with Ar3 through
`a carbon-carbon bond, when n represents 3, L3 represents a
`trivalent alkane having 1 to 20 carbon atoms, a substituted or
`unsubstituted, trivalent cycloalkane having a ring formed of 3 to
`20 carbon atoms, a trivalent silyl group having 1 to 20 carbon
`atoms, a substituted or unsubstituted, trivalent aromatic
`hydrocarbon group having a ring formed of 6 to 24 carbon atoms,
`or a substituted or unsubstituted, trivalent aromatic heterocyclic
`group which has 3 to 24 atoms and which is linked with Ar3
`through a carbon-carbon bond,
`
`or when n represents 4, L3 represents a tetravalent alkane having 1 to
`20 carbon atoms, a substituted or unsubstituted, tetravalent
`cycloalkane having a ring formed of 3 to 20 carbon atoms, a
`silicon atom, a substituted or unsubstituted, tetravalent aromatic
`hydrocarbon group having a ring formed of 6 to 24 carbon atoms,
`or a substituted or unsubstituted, tetravalent aromatic heterocyclic
`group which has a ring formed of 3 to 24 atoms and which is
`linked with Ar3 through a carbon-carbon bond, provided that,
`when both X1 and X2 represent CR2R3, o and p each represent 0, q
`
`5
`
`Idemitsu Ex. 2001, pg. 5
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`represents 1, and both L1 and L3 represent substituted or
`unsubstituted, monovalent, divalent, trivalent, or tetravalent
`aromatic hydrocarbon groups each having a ring formed of 6 to 24
`carbon atoms, or when both X1 and X3 represent CR2R3, p and q
`each represent 0, o represents 1, and both L1 and L3 represent
`substituted or unsubstituted, monovalent, divalent, trivalent, or
`tetravalent aromatic hydrocarbon groups each having a rings
`formed of 6 to 24 carbon atoms, a case where L1 and L3 are
`simultaneously linked at para positions with respect to Ar2 is
`excluded;
`
`A1 represents a hydrogen atom, a substituted or unsubstituted
`cycloalkyl group having a ring formed of 3 to 20 carbon atoms, a
`silyl group having 3 to 20 carbon atoms, a substituted or
`unsubstituted aromatic hydrocarbon group having a ring formed
`of 6 to 24 carbon atoms, or a substituted or unsubstituted aromatic
`heterocyclic group which has a ring formed of 3 to 24 atoms and
`which is linked with L1 through a carbon-carbon bond, provided
`that, when L1 represents an alkyl or alkylene group having 1 to 20
`carbon atoms, a case where A1 represents a hydrogen atom is
`excluded;
`
`A2 represents a hydrogen atom, a substituted or unsubstituted
`cycloalkyl group having a ring formed of 3 to 20 carbon atoms, a
`silyl group having 3 to 20 carbon atoms, a substituted or
`unsubstituted aromatic hydrocarbon group having a ring formed
`of 6 to 24 carbon atoms, or a substituted or unsubstituted aromatic
`heterocyclic group which has a ring formed of 3 to 24 atoms and
`which is linked with L2 through a carbon-carbon bond, provided
`that, when L2 represents an alkyl or alkylene group having 1 to 20
`carbon atoms, a case where A2 represents a hydrogen atom is
`excluded, and, when X1 and X2 each represent O, S, or CR2R3, o
`and p each represent 0, q represents 1, and both L1 and L2
`represent single bonds, or when both X1 and X3 each represent O,
`S, or CR2R3, p and q each represent 0, o represents 1, and both L1
`and L2 represent single bonds, a case where A1 and A2
`simultaneously represent hydrogen atoms is excluded;
`
`A1, A2, L1, L2, and L3 are each free of any carbonyl group.
`
`6
`
`Idemitsu Ex. 2001, pg. 6
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`C. Claim Construction
`
`We determine the meaning of the claims as a step in our analysis for
`
`determining whether to institute a trial. Consistent with the statute and the
`
`legislative history of the Leahy-Smith America Invents Act, Pub. L. No.
`
`112-29, 125 Stat. 284 (2011) (“AIA”), the Board will interpret claims of an
`
`unexpired patent using the broadest reasonable construction in light of the
`
`specification of the patent. See Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48,756, 48,766 (Aug. 14, 2012); 37 C.F.R. § 42.100(b). Under this
`
`standard, we interpret claim terms using “the broadest reasonable meaning
`
`of the words in their ordinary usage as they would be understood by one of
`
`ordinary skill in the art, taking into account whatever enlightenment by way
`
`of definitions or otherwise that may be afforded by the written description
`
`contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
`
`1054 (Fed. Cir. 1997). We presume that claim terms have their ordinary and
`
`customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
`
`1366 (Fed. Cir. 2002).
`
`Petitioner contends “a [person of ordinary skill in the art] would have
`
`understood each term in each of the Challenged Claims to have its plain and
`
`ordinary meaning, and would have understood that no term requires special
`
`construction for purposes of this Petition.” Pet. 18. Patent Owner does not
`
`challenge Petitioner’s contentions. We agree with Petitioner and determine,
`
`for purposes of this Decision, that no terms require interpretation at this
`
`time.
`
`
`
`
`
`7
`
`Idemitsu Ex. 2001, pg. 7
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`D. Asserted Grounds of Unpatentability
`
`Petitioner argues the challenged claims are unpatentable based upon
`
`the following grounds:
`
`
`
`References
`
`Basis
`
`Challenged Claims
`
`Kim 20101
`
`Park2
`
`Kim 20113
`
`Heil4 in view of Vestweber5 or
`Ikeda6
`Heil in view of Kawaguchi7
`
`
`
`§§ 102 and
`103
`§§ 102 and
`103
`§§ 102 and
`103
`
`1, 3, 4, 14–20, and
`22–26
`
`1, 14–20, and 22–26
`
`1 and 14–26
`
`§ 103(a)
`
`1, 3, 4, and 14–26
`
`§ 103(a)
`
`1, 3, 4, and 14–26
`
`1 WO 2010/107244 A2 (“Kim 2010”). Ex. 1008.
`2 KR 10-2011-0058246 A (“Park”). Ex. 1009; Ex. 1010 (English
`translation).
`3 KR 10-2011-0066766 A (“Kim 2011”). Ex. 1011; Ex. 1012 (English
`translation).
`4 WO 2007/022845 A1 (“Heil”). Ex. 1013; Ex. 1015 (English translation).
`Petitioner filed a copy of the English translation (Ex. 1015) of Heil’s
`international application provided to the Office upon entry to the
`U.S. national stage, along with a copy of the transmittal letter to the Office
`(Ex. 1014), but did not file “an affidavit attesting to the accuracy of the
`translation” pursuant to 37 C.F.R. § 42.63(b). Patent Owner does not
`dispute the translation in its Preliminary Response. Petitioner shall file the
`required affidavit attesting that Ex. 1015 is an accurate translation of Heil.
`Further, when referring to the foreign references in this Decision, we refer to
`the English translations filed by Petitioner.
`5 WO 2006/122630 A1 (“Vestweber”). Ex. 1020; Ex. 1022 (English
`translation).
`6 US 2006/0051612 A1 (“Ikeda”). Ex. 1024.
`7 Kawaguchi et al., Synthesis, Structures, and Properties of
`Asymmetrical Heteroacenes Containing Both Pyrrole and Furan
`
`8
`
`Idemitsu Ex. 2001, pg. 8
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`References
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`Basis
`
`Challenged Claims
`
`Kai8 in view of Kawaguchi
`
`§ 103(a)
`
`1, 3, 4, 15, 16, and
`22–26
`
`Kai in view of Kawaguchi and
`further in view of Heil
`
`§ 103(a)
`
`14 and 17–21
`
`
`
`Pet. 15.
`
`II. ANALYSIS
`
`A. Unpatentability under 35 U.S.C. §§ 102/103
`over Kim 2010, Park, or Kim 2011
`
`Petitioner asserts (1) claims 1, 3, 4, 14–20, and 22–26 of the ’870
`
`
`
`patent are anticipated by or would have been obvious over Kim 2010,
`
`(2) claims 1, 14–20, and 22–26 are anticipated by or would have been
`
`obvious over Park, and (3) claims 1 and 14–26 are anticipated by or would
`
`have been obvious over Kim 2011. Pet. 17, 27–39.
`
`Patent Owner argues the references are not prior art as none of the
`
`references have a publication or filing date earlier than the ’870 patent’s
`
`effective filing date of October 17, 2008. Prelim. Resp. 2–36. Patent Owner
`
`states the ’870 patent is a continuation application under 35 U.S.C. § 120 of
`
`
`
`Rings, Organic Letters, vol. 10, No. 6, pp. 1199-1202 (2008)
`(“Kawaguchi”). Ex. 1016.
`8 WO 2008/056746 A1 (“Kai”). Ex. 1017; Ex. 1019 (English translation).
`Petitioner filed a copy of the English translation (Ex. 1019) of Kai’s
`international application provided to the Office upon entry to the
`U.S. national stage, along with a copy of the transmittal letter to the Office
`(Ex. 1018), but did not file “an affidavit attesting to the accuracy of the
`translation” pursuant to 37 C.F.R. § 42.63(b). Patent Owner does not
`dispute the translation in its Preliminary Response. Petitioner shall file the
`required affidavit attesting that Ex. 1019 is an accurate translation of Kai.
`
`9
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`Idemitsu Ex. 2001, pg. 9
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`U.S. Patent Application No. 12/253,586 (“the parent ’586 application”),
`
`filed October 17, 2008. Prelim. Resp. 2–4.
`
`Petitioner asserts that even though the ’870 patent and the parent ’586
`
`application share substantially the same specification, the ’870 patent is not
`
`entitled to claim priority to the parent ’586 application because the parent
`
`’586 application does not provide sufficient written description to convey
`
`with reasonable clarity that the inventors were in possession of the full scope
`
`of each of the claims of the ’870 patent. Pet. 19–27. However, Petitioner
`
`has not set forth sufficient evidence or argument to support this contention.
`
`For example, Petitioner states the only R1 substituent disclosed in the
`
`’586 parent application having a core skeleton crosslinked with N and O (or
`
`S) does not fall within the scope of the claims. Id. at 24–25 (citing Ex. 1007,
`
`95–100). However, the cited document (Exhibit 1007) does not have pages
`
`95 through 100. Indeed, it does not appear that Petitioner even filed a copy
`
`of the parent ’586 application in this proceeding. See 35 U.S.C. § 312(a)(3)
`
`(a petition may be considered only if it “identifies, in writing and with
`
`particularity, . . . the evidence that supports the grounds for the challenge to
`
`each claim”). Similarly, when discussing support “[f]or the subject matter of
`
`Claims 22 and 23 (i.e., Claims 54 and 55 added by amendment on Feb. 9,
`
`2015) requiring R1 to be a particular heteroaryl, including pyridine,
`
`pyridazine, pyrimidine, and pyrazine,” Petitioner cites to Ex. 1007 at 22:1–
`
`100. Pet. 25. However, page 22 of Ex. 1007 relates to an amendment filed
`
`in May 2011 amending the L2 substituent of claim 4. When discussing
`
`support for the “subject matter of Claims 25 and 26 (Claims 57 and 58 . . . )”
`
`requiring R1 to have a fused ring comprising a heteroaryl including pyridine,
`
`Petitioner cites to Ex. 1007 at 4:7–10, 7:49–55, 11:52–55, 14:35–49, 16:43–
`
`10
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`Idemitsu Ex. 2001, pg. 10
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`46 as:
`
`merely describ[ing] such heteroaryls as possibilities of the
`general
`term ‘at
`least one substituted or unsubstituted,
`monovalent fused aromatic heterocyclic group having a ring
`formed of 8 to 24 atoms’ which is set forth as possible R1
`substituents on at least one of two N atoms in a symmetrical
`compound of Formula (1) or (2).
`
`Pet. 26 (emphasis omitted). However, none of these pages provides support
`
`for Petitioner’s assertions. For example, page 4 of Ex. 1007 is a Privacy Act
`
`Statement, pages 7 and 11 relate to an Examiner’s Amendment, and pages
`
`14 and 16 relate to an Amendment filed in May 2011.
`
`Therefore, based on the record before us, Petitioner has not shown
`
`sufficiently that Kim 2010, Park, and Kim 2011 are prior art to the claims of
`
`the ’870 patent. Accordingly, we decline to institute an inter partes review
`
`on any of Petitioner’s asserted grounds based on Kim 2010, Park, or Kim
`
`2011.
`
`B. Unpatentability of Claims 1, 3, 4, and 14–26
`over Heil and Vestweber or Ikeda
`
`Petitioner contends claims 1, 3, 4, and 14–26 are unpatentable under
`
`35 U.S.C. § 103 over Heil and either Vestweber or Ikeda. To support its
`
`contentions, Petitioner provides explanations as to how the prior art
`
`allegedly teaches each claim limitation. Pet. 39–47. For the reasons
`
`explained below, we are not persuaded that Petitioner has established a
`
`reasonable likelihood of prevailing on its assertion that claims 1, 3, 4, and
`
`14–26 are unpatentable over Heil and Vestweber or Ikeda.
`
`11
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`Idemitsu Ex. 2001, pg. 11
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`Heil discloses compounds for use as a material for an organic
`
`electroluminescence device, including compounds of Formula 2(a):
`
`
`
`Ex. 1015, 10:20–26.
`
`Heil states that X can be, either identically or differently, a divalent
`
`bridge selected from a number of different substituents, including S, O, and
`
`N(R1), where R1 contains at least one aryl or heteroaryl group. Id. at 11:1–2,
`
`6:18–21, 27–28, 5:20–6:4, 12:20–33.
`
`Heil was cited during prosecution as the closest prior art to the
`
`Formula (1) or (2) compounds of the ’870 patent. See Pet. 40. Petitioner
`
`states that although Heil teaches X can be NR1, O, or S, and R1 can be a
`
`heteroaryl, such as a pyridine group, the Examiner found Heil “did not
`
`provide motivation to provide the compounds according to Formula (1) or
`
`(2) of the ’870 patent, particularly in regards to X1 and X2,” and allowed the
`
`claims of the ’870 patent. Id. at 40–41 (citing Ex. 1015, 79:20, 27 and Ex.
`
`1002, 7) (emphasis omitted). Petitioner states it disagrees with the
`
`Examiner. Id. at 41. However, Petitioner does not articulate a sufficient
`
`
`
`9 In some instances, Petitioner cites to the page numbers of the original
`document as opposed to the page numbers of the exhibit as required by 37
`C.F.R. § 42.63(d)(2)(i). For consistency and clarity, when referring to pages
`of an Exhibit as cited in the Petition, this Decision shall use the numbers
`provided by Petitioner. However, when citing directly to the Exhibit, this
`Decision shall use the page numbers of the Exhibit.
`
`12
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`reason why the Examiner’s findings and conclusions are in error. See id.
`
`Nor does Petitioner provide a sufficient explanation of why one skilled in
`
`the art, looking at Heil, would select one X substituent to be O or S and the
`
`other X substituent to be N(R1), where R1 is a particular heterocyclic or other
`
`recited group, or for the substituents to be in the cis position, as required by
`
`the claim 1 of the ’870 patent. See id.; see also In re Jones, 958 F.2d 347,
`
`350 (Fed. Cir. 1992) (the fact that a claimed compound may be encompassed
`
`by a disclosed generic formula does not by itself render that compound
`
`obvious).
`
`Petitioner states that Vestweber and Ikeda each provide the requisite
`
`motivation to one skilled in the art to select one X of Heil’s compound as
`
`NR1 and the other X as O or S, thereby providing compounds within
`
`Formula (1) of the ’870 Patent. Pet. 41–43. Specifically, Petitioner states
`
`Vestweber shows heteroacene compounds crosslinked with N and S, and N
`
`and O, which would have suggested to one skilled in the art “to select one X
`
`in Heil as N and the other X in Heil as O or S, thereby providing compounds
`
`within Formula (1) of the ’870 patent.” Id. at 42. Petitioner further asserts
`
`that
`
`Id.
`
`Heil and Vestweber relate to similar acene materials or identical
`uses; Vestweber contains the type of disclosure that the artisan
`with Heil in front of him, would consult, and then consider
`modification of Heil from the hetero atoms selections shown by
`Vestweber for improving EL devices.
`
`
`Similarly, Petitioner states Ikeda (Ex. 1024) discloses polycyclic core
`
`compounds crosslinked with X3 and X4, where X3 may be NR1/O or NR1/S
`
`and have R1 as a pyridine group. Pet. 43 (citing compound 533 of Ikeda).
`
`13
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`Idemitsu Ex. 2001, pg. 13
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`Petitioner asserts that Ikeda would have suggested to one skilled in the art to
`
`select one X in Heil as NR1 and pyridine as R1 and the other X in Heil as O
`
`or S. Id. Petitioner further states that one skilled in the art, looking at Heil,
`
`would consult Ikeda “and then consider modification of Heil from the hetero
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`atom selections with pyridine on the N atom shown by Ikeda, for improving
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`EL devices.” Id.
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`However, it is not sufficient that one skilled in the art, looking at prior
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`art, “would consider modification” of the art to arrive at the claimed
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`combination. It remains necessary to identify some reason that would have
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`led one skilled in the art to modify the known compound to make the
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`claimed compound with a reasonable expectation of success. See Otsuka
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`Pharm. Co., Ltd. v. Sandoz, Inc., 678 F.3d 1280, 1293 (Fed. Cir. 2012)
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`(asking whether “the prior art would have supplied one of ordinary skill in
`
`the art with a reason or motivation to modify a lead compound to make the
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`claimed compound with a reasonable expectation of success”). Here,
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`Petitioner merely states that one skilled in the art would “consider
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`modification of Heil,” but does not aver, or provide sufficient supporting
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`evidence showing, that one skilled in the art would have had a reasonable
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`expectation of success or that such a modification would have yielded a
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`predictable result.
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`Having considered the evidence and arguments presented in the
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`Petition, we are not persuaded that Petitioner has established a reasonable
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`likelihood of prevailing in its challenge to claim 1, or to claims 3, 4, and 14–
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`26, which depend directly or indirectly from claim 1, on the basis of
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`obviousness over Heil and Vestweber or Ikeda.
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`14
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`C. Claims 1, 3, 4, and 14–26 over Heil and Kawaguchi
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`Petitioner contends claims 1, 3, 4, and 14–26 are unpatentable under
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`35 U.S.C. § 103 over Heil and Kawaguchi. To support its contentions,
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`Petitioner provides detailed explanations as to how the prior art teaches each
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`claim limitation and also relies on the Declaration of Benjamin J. Schwartz,
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`Ph.D. Pet. 47–51 (citing Ex. 1003 ¶ 53).
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`On this record, we are persuaded that Petitioner’s information is
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`sufficient to demonstrate a reasonable likelihood of prevailing on its
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`assertion that claims 1, 3, 4, and 14–26 would have been obvious to one of
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`ordinary skill in the art in view of Heil and Kawaguchi.
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`As noted above, Heil teaches compounds for use as a material for an
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`organic electroluminescence device, including compounds of Formula 2(a):
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`Kawaguchi is directed to compounds possessing improved properties
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`for use in active layers of organic field-effect transistors (OFETS) having the
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`
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`formula:
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`
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`15
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`in which R is H or alkoxy. Pet. 48 (citing Ex. 1016, Abstract, 1200:34–44).
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`Petitioner asserts Kawaguchi teaches modifying symmetrical compounds
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`such as DBBDF (having two O atoms) and DPh-IC (having two N-phenyl
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`groups) so as to provide an asymmetrical structure having two different
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`hetero atoms (O and N) in the acene structure. Id. Petitioner further states
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`Kawaguchi teaches replacing the N-phenyl of compound DPh-IC with an O
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`atom. Id. at 49 (citing Ex. 1016, 1200:28–32, 44).
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`
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`Petitioner provides reasons why one skilled in the art would have
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`modified the compound of Formula 2(a) of Heil to select an O atom for one
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`X and NR1 for the other X. Id. at 49–50. For example, Petitioner states one
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`skilled in the art would have modified the X substituents of Heil so as to
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`provide the asymmetrical arrangement as taught by Kawaguchi in order to
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`improve oxidative stability and orbital interaction of stacked molecules,
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`which are characteristics desired in heteroacenes used in organic EL devices.
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`Id. at 49 (citing Ex. 1003 ¶ 53). Petitioner further states Kawaguchi teaches
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`selecting O and NR1 for the two Xs in Heil because they are two of the
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`hetero moieties of Kawaguichi’s improved compounds. Id. at 49–50.
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`Patent Owner makes a number of arguments as to patentability of
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`claim 1. First, Patent Owner asserts the compounds of Kawaguchi “are
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`outside of the scope of Heil” as Kawaguchi is directed to trans
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`configurations and there is no teaching that Kawaguchi’s modification
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`would be applicable to Heil’s cis configurations. Prelim. Resp. 52.
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`However, as noted by Petitioner, Heil teaches both cis and trans
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`configurations, and Petitioner has provided declarant testimony providing
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`reasons as to why one skilled in the art would have modified Heil in view of
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`Kawaguchi’s teachings. See e.g., Pet. 43, 47–50; Ex. 1003 ¶ 53.
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`16
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`Patent Owner also asserts that Petitioner’s proposed rationale for
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`modifying Heil (improving cofacial π-stacking) would debilitate rather than
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`improve Heil’s OLED compounds (Prelim. Resp. 52–54) and challenges
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`Petitioner’s statement that Kawaguchi’s asymmetric compounds possess
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`enhanced stability compared to similar symmetrical compounds (id. at 54).
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`At this stage of the proceeding, we are not persuaded by these
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`arguments. The record before us does not include sufficient evidence to
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`support Patent Owner’s arguments. See In re Geisler, 116 F.3d 1465, 1470
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`(Fed. Cir. 1997) (attorney arguments and conclusory statements that are
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`unsupported by factual evidence are entitled to little probative value).
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`Based on the current record, we are satisfied that Petitioner has shown
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`“some articulated reasoning with some rational underpinning to support the
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`legal conclusion of obviousness” for claim 1. See KSR Int’l Co. v. Teleflex
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`Inc., 550 U.S. 398, 418 (2007).
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`Regarding claims 3, 4, and 14–26, which depend directly or indirectly
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`from claim 1, Petitioner provides evidence and argument that each of these
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`claims would have been obvious over the combined teaches of Heil and
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`Kawaguchi. See e.g., Pet. 51. Patent Owner does not argue any of these
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`claims separate from claim 1. See Prelim. Resp. 55.
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`For the foregoing reasons, on the record before us, we are persuaded
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`that there is a reasonable likelihood that Petitioner would prevail in
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`establishing claims 1, 3, 4, and 14–26 would have been obvious over Heil
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`and Kawaguchi.
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`D. Claims 1, 3, 4, 15, 16, and 22–26 over Kai and Kawaguchi
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`Petitioner also asserts that claims 1, 3, 4, 15, 16, and 22–26 are
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`unpatentable over Kai and Kawaguchi. Pet. 51–57.
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`17
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`Petitioner states Kai describes heteroacene compounds used as host
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`materials for phosphorescent dopants, including compounds having the
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`general Formula (2)
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`
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`in which X is N or CH and at least one of the Xs is N; Ar1 to Ar3 each
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`represent a substituted or unsubstituted non-condensed aromatic
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`hydrocarbon or aromatic heterocyclic group; and Ar2 and Ar3 each may form
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`a condensed ring with the X-containing ring. Pet. 52 (citing Ex. 1019 ¶¶ 14,
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`15). Petitioner further cites to compound 131 of Kai, which is shown below:
`
`
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`Petitioner asserts that one skilled in the art, in view of the teaching of
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`Kawaguchi, would routinely have modified the Kai compounds by
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`substituting an O atom for the N-Ar1 (N-substituted phenyl) moiety of Kai to
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`arrive at the claimed subject matter of claim 1. Id. (citing Ex. 1019 ¶ 13).
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`Petitioner provides reasoning why one skilled in the art would have modified
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`18
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`Kai in view of Kawaguchi, including Kawaguchi’s teaching that providing
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`asymmetrically-substituted heteroatoms (N/O) on an aromatic backbone,
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`such as that of Kai, would provide improved stability and electronic
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`coupling. Id. (citing Ex. 1003 ¶¶ 53, 54–56). Petitioner also cites to Dr.
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`Schwartz’s testimony that one skilled in the art would have had a reasonable
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`expectation of success. Id. (citing Ex. 1003 ¶¶ 53, 54–56).
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`Patent Owner makes a number of arguments as to the patentability of
`
`claim 1 over Kai and Kawaguchi. First, Patent Owner asserts Kai mandates
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`the compounds must have a specific indolocarbazole skeleton and an X-
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`containing ring, which contains at least one N, attached to the N atom of the
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`carbazole ring. Prelim. Resp. 56–57 (citing Ex. 1019 ¶ 14). However,
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`although each of Kai’s compounds do have these features, Kai does not state
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`that these features are required. Patent Owner also contends Petitioner has
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`not provided a reason why one skilled in the art would have selected the N-
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`Ar1 group for modification as opposed to the N-X containing ring group. Id.
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`at 57. However, Petitioner cites to Kawaguchi, which teaches substituting
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`an O atom for the N-Ar1 group. Pet. 53–54 (citing Ex. 1016, 1200:28–32,
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`44). Finally, Patent Owner contends that one skil