Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 6
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`
`
` Entered: June 18, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MOSES LAKE INDUSTRIES, INC.
`Petitioner
`
`v.
`
`ENTHONE, INC.
`Patent Owner
`____________
`
`Case IPR2014-00246
`Patent 7,815,786 B2
`____________
`
`
`Before KEVIN F. TURNER, SHERIDAN K. SNEDDEN, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge
`
`
`DECISION
`Denial of Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`Universal Electronics Exhibit 2004, Page 1
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01111
`
`

`

`Case IPR2014-00246
`Patent 7,815,786 B2
`
`I.
`
`INTRODUCTION
`
`Moses Lake Industries, Inc. (hereinafter, “MLI”) filed a petition
`(Paper 1, “Pet.”) requesting inter partes review of claims 1-19 of U.S. Patent
`No. 7,815,786 B2 (“the ’786 Patent”). Patent Owner, Enthone, Inc.
`(“Enthone”), filed a Preliminary Response (Paper 5, “Prelim. Resp.”). We
`have jurisdiction under 35 U.S.C. § 314.
`The standard for instituting an inter partes review is set forth in
`35 U.S.C. § 314(a), which provides:
`THRESHOLD.—The Director may not authorize an inter
`partes review to be instituted unless the Director determines
`that the information presented in the petition filed under section
`311 and any response filed under section 313 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.
`
`We conclude that the information presented in the petition does not
`demonstrate that there is a reasonable likelihood that MLI will prevail in
`challenging claims 1-19 as unpatentable under 35 U.S.C. §§ 102 or 103. For
`the reasons that follow, the Petition is denied.
`
`
`
`
`
`2
`
`Universal Electronics Exhibit 2004, Page 2
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`

`

`Case IPR2014-00246
`Patent 7,815,786 B2
`
`A.
`
`Related Matters
`
`MLI indicates that the ’786 Patent was asserted in Enthone, Inc. v.
`
`Moses Lake Industries, Inc., Case No. 1:13-cv-1054, in the U.S. District
`Court for the Northern District of New York. Pet. 1. U.S. Patent
`No. 7,303,992 B2, which issued from a parent application of the patent
`application that issued as the ‘786 Patent, was also asserted in that civil
`action. U.S. Patent No. 7,303,992 is also the subject of a petition requesting
`inter partes review in Case IPR2014-00243, which is being decided
`concurrently.
`
`
`B. The ’786 Patent (Ex. 1001)
`
`The ’786 Patent relates to a method for electrolytically plating copper
`onto a substrate having submicron-sized interconnect features, using a
`source of copper ions and suppressor compound having polyether groups.
`Ex. 1001, Abstract. The ’786 Patent discusses known systems that rely on
`so-called “superfilling” or “bottom-up growth” to deposit copper into high
`aspect ratio features, where the superfilling involves filling a feature from
`the bottom up, rather than at an equal rate on all its surfaces, to avoid seams
`and pinching off that can result in voiding. Id. at 2:16-21. The ’786 Patent
`discloses a suppressor compound formed from a combination of propylene
`oxide (PO) repeat units and ethylene oxide (EO) repeat units present in a
`PO:EO ratio between about 1:9 and about 9:1 and bonded to a nitrogen-
`containing species, wherein the molecular weight of the suppressor
`compound is between about 1000 and about 30,000. Id. at 3:33-38.
`
`3
`
`Universal Electronics Exhibit 2004, Page 3
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`

`

`Case IPR2014-00246
`Patent 7,815,786 B2
`
`C.
`
`Challenged Claims
`
`Independent claim 1, as well as dependent claims 2-19, are challenged
`
`by MLI in its Petition. Claim 1 is illustrative and is reproduced below, with
`emphasis added:
`
`1. An electrolytic plating composition for electrolytically
`plating Cu onto a semiconductor integrated circuit substrate
`having a planar plating
`surface and
`submicron-sized
`interconnect features by immersion of the semiconductor
`integrated circuit substrate into the electrolytic solution, the
`composition comprising:
`a source of Cu ions in an amount sufficient to
`electrolytically deposit Cu onto the substrate and into the
`electrical interconnect features; and
`a suppressor comprising a compound selected from the
`group consisting of:
`(i) a first suppressor compound comprising a polyether
`group bonded to a nitrogen-containing species, wherein the
`polyether group comprises a combination of propylene oxide
`(PO) repeat units and ethylene oxide (EO) repeat units present
`in a PO:EO ratio between about 1:9 and about 9:1, and
`wherein the molecular weight of the first suppressor compound
`is between about 1000 and about 3600 g/mol;
`(ii) a second suppressor compound comprising a
`polyether group bonded to a nitrogen-containing species,
`wherein the polyether group comprises a combination of
`propylene oxide (PO) repeat units and ethylene oxide (EO)
`repeat units present in a PO:EO ratio between about 1:9 and
`about 9:1, wherein the molecular weight of the second
`suppressor compound is between about 1000 and about 30,000
`g/mol, and wherein the second suppressor compound further
`comprises a capping moiety selected from the group consisting
`of an alkyl group or a block polymer comprising propylene
`oxide repeat units;
`
`4
`
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`Case IPR2014-00246
`Patent 7,815,786 B2
`
`(iii) a third suppressor compound comprising a polyether
`group bonded to a nitrogen-containing species, wherein the
`polyether group comprises a combination of propylene oxide
`(PO) repeat units and ethylene oxide (EO) repeat units present
`in a PO:EO ratio between about 1:9 and about 9:1, wherein the
`nitrogen-containing species is an alkylether amine, and wherein
`the molecular weight of the third suppressor compound is
`between about 1000 and about 30,000 g/mol; and
`(iv) a fourth suppressor compound comprising a
`polyether group bonded to a nitrogen-containing species,
`wherein the polyether group comprises a combination of
`propylene oxide (PO) repeat units and ethylene oxide (EO)
`repeat units present in a PO:EO ratio between about 1:9 and
`about 9:1, wherein the molecular weight of the fourth
`suppressor compound is between about 1000 and about 30,000
`g/mol, and wherein a nitrogen in the nitrogen-containing
`species is a quaternary amine;
`(v) a fifth suppressor compound comprising a polyether
`group bonded to a nitrogen-containing species, wherein the
`polyether group comprises a combination of propylene oxide
`(PO) repeat units and ethylene oxide (EO) repeat units present
`in a PO:EO ratio between about 1:9 and about 9:1, wherein the
`molecular weight of the fifth suppressor compound is between
`about 1000 and about 30,000 g/mol, and wherein
`the
`composition comprises less than about 30 g/L acid when the
`fifth suppressor is selected;
`(vi) a sixth suppressor compound comprising a polyether
`group bonded to a nitrogen-containing species, wherein the
`polyether group comprises a combination of propylene oxide
`(PO) repeat units and ethylene oxide (EO) repeat units present
`in a PO:EO ratio between about 1:9 and about 9:1, wherein the
`molecular weight of the sixth suppressor compound is between
`about 1000 and about 30,000 g/mol, and wherein
`the
`composition comprises between about 4 g/L and about 30 g/L
`copper ion when the sixth suppressor is selected; and
`(vi) combinations thereof.
`5
`
`Universal Electronics Exhibit 2004, Page 5
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`

`

`Case IPR2014-00246
`Patent 7,815,786 B2
`
`D. Prior Art Relied Upon
`
`MLI relies upon the following prior art references:
`Hagiwara
`US 6,800,188 B2
`
`Oct. 5, 2004
`Wang
`
`US 7,128,822 B2
`
`Oct. 31, 2006
`Mikkola
`US 6,649,038 B2
`
`Mar. 18, 2003
`Martyak
`US 2004/0045832 A1 Mar. 11, 2004
`Ishikawa
`US 6,518,182 B1
`
`Feb. 11, 2003
`Dubin
`
`US 6,491,806 B1
`
`Dec. 10, 2002
`Mikkola
`US 2004/0217009 A1 Nov. 4, 2004
`Lewis
`
`US 5,612,305
`
`Mar. 18, 1997
`Nakada
`
`US 2008/0264798 A1 Oct. 30, 2008
`Calvert
`
`US 6,645,364 B2
`
`Nov. 11, 2003
`Calvert
`
`US 2002/0134684 A1
`Sep. 26, 2002
`Barstad
`
`US 2005/0016858 A1
`Jan. 27, 2005
`Brown
`
`US 2004/0138075 A1
`Jul. 15, 2004
`Stridde
`
`US 6,420, 311 B1
`Jul. 16, 2002
`Eckles
`
`US 4,384,930
`
`May 24, 1983
`Willis
`
`US 4,347,108
`
`Aug. 31, 1982
`
`BASF, Surfactants: Pluronic and Tetronic (1999) (Ex. 1012) (“BASF
`Catalog”).
`
`Huntsman LLC, Technical Bulletin XTJ-504 (2003) (Ex. 1019)
`(“Huntsman Technical Bulletin”).
`
`Irving R. Schmolka, A Review of Block Polymer Surfactants, J. Am. Oil
`Chemists’ Soc. 110 (March 1977) (Ex. 1026) (“BASF Article”).
`
`
`
`
`
`
`
`(Ex. 1006)
`(Ex. 1007)
`(Ex. 1008)
`(Ex. 1009)
`(Ex. 1010)
`(Ex. 1011)
`(Ex. 1013)
`(Ex. 1014)
`(Ex. 1015)
`(Ex. 1016)
`(Ex. 1017)
`(Ex. 1018)
`(Ex. 1020)
`(Ex. 1021)
`(Ex. 1022)
`(Ex. 1023)
`
`
`
`6
`
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`

`

`Case IPR2014-00246
`Patent 7,815,786 B2
`
`E. Alleged Grounds of Unpatentability
`MLI asserts the following grounds of unpatentability:
`
`Basis
`
`References
`
`§ 102
`
`Hagiwara
`
`§ 102 Wang
`Hagiwara and Wang in view of
`“Other References”1
`
`§ 103
`
`
`
`II. ANALYSIS
`
`Claim(s)
`
`1-18
`
`1-6, 8, and 11-19
`
`1-19
`
`A. Claim Construction
`
`As a first step in our analysis for determining whether to institute a
`trial, we determine the meaning of the claims. In an inter partes review,
`claim terms in an unexpired patent are given their broadest reasonable
`construction in light of the specification of the patent in which they appear.
`37 C.F.R. § 42.100(b). Under the broadest reasonable construction standard,
`claims are to be given their broadest reasonable interpretation consistent
`with the specification, and the claim language should be read in light of the
`specification, as it would be interpreted by one of ordinary skill in the art.
`In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
`This means that the words of the claim are given their plain meaning unless
`
`
`1 While MLI cites this as a single ground in its Petition, we agree with
`Enthone that this ground actually constitutes at least 33 potential grounds of
`unpatentability being raised therein. Prelim. Resp. 26-28.
`7
`
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`Case IPR2014-00246
`Patent 7,815,786 B2
`
`the plain meaning is inconsistent with the specification. In re Zletz, 893
`F.2d 319, 321 (Fed. Cir. 1989). In this regard, an inventor is entitled to be
`his or her own lexicographer of patent claim terms by providing a definition
`of the term in the specification with reasonable clarity, deliberateness, and
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`MLI provides specific construction of the claim terms “suppressor”
`and “interconnect features.2” Pet. 4. With respect to “suppressor,” MLI
`argues that the broadest reasonable interpretation is “a compound
`comprising a combination of propylene oxide (PO) repeat units and ethylene
`oxide (EO) repeat units present in a PO:EO ratio between about 1:9 and 9:1
`and bonded to a nitrogen-containing species, wherein the molecular weight
`of the suppressor compound is between about 1,000 and 30,000.” Id.
`Enthone generally agrees with that definition but provides that the latter
`aspect of the molecular weight varies based on the limitations found in
`elements (ii) through (iv) of claim 1. Prelim. Resp. 7. Enthone also argues
`that to qualify as a “suppressor,” a compound must function as a suppressor
`in the claimed electrolytic plating composition. Id. The broadest reasonable
`interpretation of “suppressor” at least requires “a compound comprising a
`combination of propylene oxide (PO) repeat units and ethylene oxide (EO)
`repeat units present in a PO:EO ratio between about 1:9 and 9:1 and bonded
`to a nitrogen-containing species, wherein the molecular weight of the
`suppressor compound is between about 1,000 and 30,000.” See Ex. 1001
`3:25-30. Whether a ‘suppressor’ is also limited to ‘compounds that provide
`
`2 We note that MLI’s section on claim construction (Pet. 4) also mentions
`the limitation “superfill” but does not provide a construction.
`8
`
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`

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`
`Casee IPR2014--00246
`
`
`Patennt 7,815,7886 B2
`
`the ffunction off suppressioon in the cclaimed meethod’ is noot materiall to our
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`decission. Therrefore, we do not reacch that issuue.
`
`
`
`
`
`
`With resspect to “innterconnect features,”” MLI arguues that thee proper
`
`
`
`
`
`interrpretation iis features having botttoms, sideewalls, andd top openiings, such
`
`
`
`
`
`
`
`
`
`as a via or trennch, formedd in a dieleectric substtrate.” Pett. 4. Enthoone does
`
`
`
`
`
`
`
`not ccomment oon MLI’s ddefinition. Prelim. Reesp. 6-9. WWe adopt tthis
`
`
`
`
`consstruction foor purposess of this deecision.
`
`
`
`
`
`
`Enthonee also seekss specific cconstructioons of “bonnded,” “nittrogen-
`
`
`
`
`
`
`
`containing species,” and “capping mmoiety” thhat we are nnot persuadded are in
`
`needd of a speciific construuction. Id.
`
`
` at 7-8.
`
`
`
`
`
`
`With resspect to thee claim limmitations “ppropylene ooxide (PO)) repeat
`
`
`
`
`
`
`
`unitss” and “ethhylene oxidde (EO) reppeat units,”” we agreee with Enthhone that
`
`
`
`
`
`
`
`the cconstructioons supplied are the bbroadest reaasonable aand in keepping with
`
`. Thus, wee
`
`
`
`
`
`the eevidence ciited in its PPreliminaryy Responsee. Prelim.
` Resp. 8-9
`
`
`
`
`
`are ppersuaded tthat “propyylene oxide (PO) reppeat units”
` chemical
`means the
`
`
`
`
`
`
`
`ructure llowing strwith the folstruccture represented by tthe formulla C3H6O w
`
`
`reprooduced bellow:
`
`,
`
`
`
`
`
`
`
`and tthat “ethyllene oxide (EO) repeaat units” mmeans the cchemical sttructure
`
`
`
`
`
`
`
`produced tructure repollowing stwith the forepreesented byy the formuula C2H4O w
`
`beloww:
`
`9
`
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`

`

`
`
`Casee IPR2014--00246
`
`
`Patennt 7,815,7886 B2
`
`.
`constructi
`We adoppt the abovve specific
`
`ions for thee purposes
`
`
`
`
`
`Deciision.
`
`of this
`
`
`
`B. Prinnciples of LLaw
`
`
`
`et forth in ement as sed every eleif each andpated only “A claimm is anticip
`
`
`
`
`
`
`
`
`
`
`
`
`
`the cclaim is fouund, eitherr expressly or inherenntly describbed, in a siingle prior
`
`
`
`art reeference.” Verdegaaal Bros. v. Union Oil
`
`Co. of Callifornia, 81
`
`14 F.2d
` 631 (Fed.
`628,
`
`
`
`
`
` Cir. 1987)). “A priorr art refereence that diiscloses a ggenus still
`
`
`
`
`
`
`
`
`t y” but mustd categoryn that broadcies withinose all specently disclodoess not inhere
`
`
`
`
`
`
`
`be exxamined too see if a ddisclosure oof the claimmed speciees has beenn made or
`
`
`
`
`whetther the priior art refeerence mereely invites
`
`
`
` further exxperimentaation to findd
`
`
`
`
`
`
`
`d s, 370 F.3d. Holdingsorp. of Am.the sspecies. MMetabolite LLabs., Inc. v. Lab. Co
`
`
`
`
`13544, 1367 (Feed. Cir. 20004).
`
` 103(a) if tthe
`
`
`
`
`A patentt claim is uunpatentable under 355 U.S.C. §
`
`
`
`
`
`
`
`diffeerences bettween the cclaimed suubject matteer and the
`
`
`
`
`
`the ssubject mattter, as a wwhole, wouuld have beeen obviou
`
`s at the timme the
`
`
`
`
`
`
`
`invenntion was made to a person havving ordinaary skill inn the art to
`
`
`
`550 U.S. 39eflex Inc., 5Co. v. Telefpertains. KKSR Int’l C
`
`subjeect matter
`
`98, 406
`
`
`
`
`
`(20007). The quuestion of obviousneess is resolvved on the
`
`basis of unnderlying
`
`
`
`
`
`
`
`factuual determiinations inncluding: ((1) the scoppe and conntent of thee prior art;
`
`
`
`
`
`(2) aany differennces betweeen the claaimed subjeect matter
`
`and the priior art;
`
`prior art arre such thaat
`
`which saidd
`
`10
`
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`Case IPR2014-00246
`Patent 7,815,786 B2
`
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
`The level of ordinary skill in the art is reflected by the prior art of
`record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001);
`In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich,
`579 F.2d 86, 91 (CCPA 1978).
`
`
`C. Anticipation by Hagiwara
`MLI asserts that claims 1-18 of the ’786 Patent are anticipated under
`35 U.S.C. § 102 by Hagiwara. Pet. 6-18. Hagiwara describes a copper
`plating bath comprising a reaction condensate of an amine compound and
`glycidyl ether or a quaternary ammonium derivative of this reaction
`condensate. Ex. 1006, Abstract, 2:53-56. Hagiwara describes the reaction
`condensate as the active component that provides advantageous plating
`properties and uses conventional plating bath components such as various
`sources of copper ions, acids, brighteners, chlorine ions, levelers, and
`surfactants. Id. at 4:41-65, 7:66-68, 8:38-9:52.
`MLI argues that Hagiwara teaches all of the elements of claims 1-18.
`Pet. 6-18. Enthone argues that Hagiwara fails to teach specific elements of
`independent claim 1. Prelim. Resp. 11-18. We find Enthone’s arguments to
`be persuasive.
`Claim 1 recites, in part, that the composition includes “a first
`suppressor compound comprising a polyether group . . . compris[ing] a
`combination of propylene oxide (PO) repeat units and ethylene oxide (EO)
`
`11
`
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`Casee IPR2014--00246
`
`
`Patennt 7,815,7886 B2
`
`
`
`
`
`
`
`repeat units.” MLI reliess on Formuulas III andd IV of Haggiwara in iits analysiss,
`
`
`
`
`
`
`
`
`
`
`withh the formuulas reproduced beloww:
`
`
`
`(Formula III, EEx. 1006, 66:5-15) andd
`
`
`
`
`
`
`
`
`
`
`
`(For
`
`
`mula IV, EEx. 1006, 66:20-30).
`ivalent to being equie argued bby MLI as b
`
`
`
`The discclosed commpounds ar
`
`
`
`
`
`
`
`
`
`the cclaimed proopylene oxxide repeatt unit and ththe ethylenne oxide reppeat units,
`
`
`withh the centerr -CH2CH2
`
`
`
`
`O- being the ethylenne oxide reppeat unit aand “[t]he
`
`
`
`
`
`
`grouups to the leeft and righht of the EEO repeat uunits [beingg] derived
`from
`
`
`
`
`
`
`proppylene oxidde (PO).” EEx. 1027, ¶¶ 57; Pet. 88-9. Enthoone argues
`
` that MLI’’s
`
`
`
`
`
`
`
`asserrtion that the alleged PO repeatt units are dderived froom propyleene oxide
`
`
`
`
`
`
`doess not comport with thhe proper constructionn of that cllaim elemeent.
`
`on the cla
`
`
`Preliim. Resp. 112. Based
`
`
`
`
`
`
`
`
`The 2-hydroxyypropylenee spacers, thhe groups
`
`on either sside of the
`center
`-CH
`imed in
`
`
`
`
`
`at units clae PO repeaalent to the not equiva2CH2O- eleement, are
`claimm 1.
`
`
`
`
`
`
`
`
`
`
`
`
`
`“are not deriveed from proopylene oxxide” eitherr. Prelim.
`
`Resp. 12-113.
`
`
`
`
`
`
`
`
`12
`
`“Insttead, they are derivedd from the condensattion reactioon betweenn an aminee
`
`im construuction adoppted abovee, we agreee.
`
`Enthonee also arguees that the 2-hydroxyypropylenee spacers inn Hagiwaraa
`
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`Case IPR2014-00246
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`
`(e.g., dimethylamine) and glycidyl moieties of a diglycidyl ether of
`polyethylene glycol, the reaction by which the [above-cited compounds] are
`prepared.” Id. Enthone also contends that “[a]lthough a propylene oxide
`outer terminal unit can be a monovalent 2-hydroxypropyl group, a propylene
`oxide repeat unit cannot be divalent 2-hydroxypropylene.” Id. at 13.
`In addition, MLI argues that Hagiwara discloses that “tetronic-type
`surfactants” may be used (Pet. 9-10, citing Ex. 1006, 9:46), and that BASF
`Catalog discloses that TETRONIC® molecules have a specific structure and
`particular properties. Id. As Enthone argues, however, Hagiwara fails to
`suggest any particular tetronic surfactant or how any such surfactant would
`provide the recited superfilling properties. Prelim. Resp. 16-18. We agree
`with Enthone.
`It is well established that the disclosure of a genus in the prior
`art is not necessarily a disclosure of every species that is a
`member of
`that genus. There may be many species
`encompassed within a genus that are not disclosed by a mere
`disclosure of the genus. On the other hand, a very small genus
`can be a disclosure of each species within the genus.
`Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 999 (Fed. Cir. 2006)
`(citations omitted). Thus, while Hagiwara may disclose “tetronic-type
`surfactants,” and some of those surfactants may have structures and
`properties commensurate with those claimed, such a disclosure does not
`necessarily anticipate the claimed polyether suppressor of claim 1.
`As such, we are not persuaded that MLI has shown a reasonable
`likelihood that it will prevail in challenging claims 1-18 as anticipated under
`35 U.S.C. § 102 by Hagiwara.
`
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`D. Anticipation by Wang
`MLI asserts that claims 1-6, 8, and 11-19 of the ’786 Patent are
`anticipated under 35 U.S.C. § 102 by Wang. Pet. 18-30. Wang describes an
`electrolytic plating composition comprising an additive having a dual
`function as both a suppressor and a leveler, with the additive having multiple
`moieties providing a level copper deposit and suppressing copper plating.
`Ex. 1007, 2:39-49. Wang discloses that these compounds are a reaction
`product of a compound containing one or more heteroatoms, a spacer group,
`and an alkylene oxide. Id.
`MLI asserts that Wang discloses “[a] wide variety of compounds
`capable of suppressing copper plating . . . . Exemplary of such compounds
`include, but are not limited to alkylene oxide compounds.” Pet. 20; Ex.
`1007, 5:38-42. Wang also provides that “[p]articularly useful polyalkylene
`glycols, such as polyethylene, polypropylene, and polybutylene glycols, as
`well as poly(EO/PO) copolymers.” Ex. 1007, 6:8-13. Wang also discloses
`“[a]n example of such an alkylene oxide compound is a compound including
`EO groups, PO groups and a third ether linkage, such as (Cl-C4)alkoxy or
`phenoxy. Such alkylene oxy compounds are represented by the formula -
`(EO)n(PO)mOR, wherein R is (C1-C4)alkyl, phenyl, or bisphenol A, n and m
`are independently integers of from 1 to 3000.” Id. at 5:67-6:7.
`Enthone argues that Wang does not teach the element of “repeat units
`present in a PO:EO ratio between about 1:9 and about 9:1” per claim 1.
`Prelim. Resp. 21-22. Enthone continues that MLI’s reliance on Wang
`disclosing a PO:EO ratio between 1:3000 and 3000:1 does not teach the
`focused range of about 1:9 to about 9:1, as recited in claim 1. Enthone also
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`argues that Wang does not suggest any principles by which the selection of
`the claimed range would have occurred. We agree.
`If the claims are directed to a narrow range, and the reference teaches
`a broad range, depending on the other facts of the case, it may be reasonable
`to conclude that the narrow range is not disclosed with “sufficient
`specificity” to constitute an anticipation of the claims. See, e.g., Atofina at
`999. Here, as Enthone points out (Prelim. Resp. 21-22), there is no
`disclosure in Wang providing sufficient specificity that the PO:EO ratios
`disclosed should be reduced down to the ratios claimed in claim 1 for the
`suppressor compounds. Dr. West’s testimony is equally unavailing to MLI’s
`position because he acknowledges the difference, “PO:EO ratio between
`about 1:9 and about 9:1 [e.g., PO:EO ratio between about 1:3000 and about
`3000:1]” (Ex. 1027, ¶ 140), but does not indicate how Wang counsels for the
`narrower range. Thus, we are not persuaded that MLI has demonstrated that
`claim 1 is anticipated by Wang.
`As such, we are not persuaded that MLI has shown a reasonable
`likelihood that it will prevail in challenging claims 1-6, 8, and 11-19 as
`anticipated under 35 U.S.C. § 102 by Wang.
`
`
`E. Obviousness over Hagiwara and Wang in view of “Other References”
`MLI asserts that the “Other References” (Exs. 1008-1018, 1020-1023,
`and 1026) all qualify as prior art (Pet. 30-32), and that Hagiwara and Wang,
`each independently “or in combination with other references disclosed
`within” render obvious all claims of the ’786 Patent. Id. at 32. As discussed
`above, we are persuaded that the “single” ground proffered by MLI is
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`actually multiple grounds of unpatentability, i.e., 33 potential grounds, with
`each ground requiring specific support and analysis to be considered. MLI
`addresses specific claims and combinations (id. at 32-35), but as to a
`rationale to combine the teachings of the references provides only the
`following:
`a person of ordinary skill in the art would have understood that
`the elements from the above combination of references would
`have been nothing more than “[c]ombining prior art elements
`according to known methods to yield predictable results,”
`“[u]se of known technique[s] to improve similar devices
`(methods, or products) in the same way,” “[a]pplying a known
`technique to a known device (method, or product) ready for
`improvement to yield predictable results,” and “‘[o]bvious to
`try’ – choosing from a finite number of identified, predictable
`solutions, with a reasonable expectation of success.” MPEP §
`2143(A), (C), (D), (E).
`Id. at 35. MLI’s claim charts for obviousness (id. at 37-53) cite to specific
`portions of the “Other References” and, at points, detail that “further
`explanation” may be found in Dr. West’s Declaration. Id. Dr. West’s
`Declaration provides specific discussion of the references, indicates that they
`are in the same field of endeavor as the ’786 Patent, and mimics the rationale
`for combining the teachings from the Petition cited above. Ex. 1027,
`¶¶ 202-851. We are not persuaded that this is sufficient for the MLI to
`demonstrate prima facie cases of obviousness.
`MLI has failed to resolve any differences between the claimed
`invention and the cited references, identify any specific proposed
`modifications to the references, or explain persuasively why one skilled in
`the art would have made any specific modifications to the references relied
`
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`on in the challenges described in this ground of unpatentability. At least one
`of the Graham factors discussed above, namely explaining any differences
`between the claimed subject matter and the prior art, is not discussed in
`MLI’s Petition; rather, the Petition merely recites different elements of the
`“Other References,” and does not indicate how or why those elements would
`have been adopted by one of ordinary skill in the art to be used in the
`methods of Hagiwara and Wang. For example, MLI details that Martyak
`discloses amines that can be used as surfactants (Pet. 39), but the Petition is
`bereft of detail as to why the amines of Martyak would be used in Hagiwara
`or Wang by ordinarily skilled artisans, other than the generic prescription
`that prior art elements can be combined, as discussed above.
`We are also persuaded that Dr. West’s testimony is equally unavailing
`to MLI’s grounds of unpatentability. Taking the same example discussed
`above, Dr. West argues that Hagiwara and Martyak (Ex. 1026, ¶ 224), and
`Wang and Martyak (id. at ¶ 228), are in the “same field of endeavor as the
`‘786 patent, namely electroplating copper onto a substrate with interconnect
`features,” and that “one of skill in the art would recognize that both of these
`references disclose similar polyether suppressor molecules, and that these
`molecules are interchangeable in copper electroplating methods.” Id. at ¶¶
`224, 228. These are followed with the same pronouncement of combining
`known elements as found in the Petition. Id. Given the large number of
`compounds detailed in even the cited section of Martyak (Ex. 1009, ¶ 55), it
`is not clear why one of ordinary skill in the art would have chosen those
`specific compounds that are essential to MLI’s ground of unpatentability
`teaching or suggesting the elements of claim 1. Dr. West’s testimony is
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`generic to any type of combination and does not address in a meaningful
`way the specific combination being proffered.
`We are not persuaded that Dr. West’s testimony is sufficient to
`demonstrate a reasonable likelihood that MLI would prevail with respect to
`the obviousness grounds. See 37 C.F.R. 42.65(a) (Expert testimony that
`does not disclose the underlying facts or data on which the opinion is based
`is entitled to little or no weight.). Nothing in the Federal Rules of Evidence
`or Federal Circuit jurisprudence requires a fact finder to credit the
`unsupported conclusions or assertions of an expert witness. Rohm and Haas
`Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997). See also
`Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373-74 (Fed. Cir. 2008);
`ActiveVideo Networks, Inc. v. Verizon Communications, Inc., 694 F.3d 1312,
`1327-28 (Fed. Cir. 2012) (Testimony that is generic and bears no relation to
`any specific combination of prior art elements is insufficient to support a
`determination of obviousness.).
`We are also persuaded by Enthone’s characterization of the art of the
`instant patent and prior art references being “unpredictable.” Prelim. Resp.
`31-33. “To the extent an art is unpredictable, as the chemical arts often are,
`KSR’s focus on these ‘identified, predictable solutions’ may present a
`difficult hurdle because potential solutions are less likely to be genuinely
`predictable.” Eisai Co. Ltd. v. Dr. Reddy’s Laboratories, Ltd., 533 F.3d
`1353, 1358 (Fed. Cir. 2008). Enthone has provided evidence (Ex. 2005) that
`suggests that the plating mechanism involved “is still not fully understood
`and continues to be investigated.” Id. at 5. Thus, we agree with Enthone
`that MLI must provide more than conclusory expert testimony, as discussed
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`above, and conclusory rationales to combine the teachings, to present a
`prima facie case of obviousness. Prelim. Resp. 43.
`Based on the Petition and evidence provided, we are not persuaded
`that the “Other References” necessarily cure the deficiencies in the
`challenges based on Hagiwara and Wang discussed above. Additionally,
`MLI must demonstrate a reasonable likelihood to prevail based on “the
`information presented in the petition,” 35 U.S.C. § 314(a), where submitted
`exhibits can support that information but should not be the sole basis of the
`reasonable likelihood determination.
`For the foregoing reasons, we are not persuaded that there is a
`reasonable likelihood that MLI will prevail in demonstrating that claims 1-
`19 of the ’786 Patent are unpatentable over combinations of Hagiwara,
`Wang, and “Other References.”
`
`
`III. CONCLUSION
`
`For the forgoing reasons, we have not identified any of MLI’s
`proposed grounds of unpatentability on which MLI likely will prevail. As
`such, MLI has failed to demonstrate a reasonable likelihood of prevailing on
`its assertions as to any of the challenged claims.
`
`
`
`
`IV. ORDER
`It is ORDERED that the Petition is denied as to all challenged claims.
`It is FURTHER ORDERED that no inter partes review is
`instituted.
`
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