Trials@uspto.gov
`571-272-7822
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` Paper No. 36
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` Entered: July 1, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CERAMTEC GMBH,
`Petitioner,
`
`v.
`
`CERAMEDIC, LLC,
`Patent Owner.
`____________
`
`IPR2015-00398
`Patent 6,066,584
`____________
`
`
`
`Before GRACE KARAFFA OBERMANN, KRISTINA M. KALAN, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
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`571-272-7822
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` Paper No. 36
`
`
` Entered: July 1, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CERAMTEC GMBH,
`Petitioner,
`
`v.
`
`CERAMEDIC, LLC,
`Patent Owner.
`____________
`
`IPR2015-00398
`Patent 6,066,584
`____________
`
`
`
`Before GRACE KARAFFA OBERMANN, KRISTINA M. KALAN, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
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`IPR2015-00398
`Patent 6,066,584
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`
`INTRODUCTION
`I.
`Petitioner CeramTec GmbH filed a Petition (Paper 2, “Pet.”) to
`institute an inter partes review of claims 1–5, 7–13, 15–17, 19–21, 23, 30–
`38, 52, and 53 of U.S. Patent No. 6,066,584 (Ex. 1001, “the ’584 patent”)
`pursuant to 35 U.S.C. §§ 311–319. Patent Owner CeraMedic LLC filed a
`Preliminary Response (Paper 7, “Prelim. Resp.”). We instituted an inter
`partes review of claims 1–5, 7–13, 15–17, 19–21, 23, 30–38, 52, and 53 on
`certain grounds of unpatentability alleged in the Petition (Paper 11, “Dec.”).
`After institution of trial, Patent Owner filed a Patent Owner Response (Paper
`20; “PO Resp.”) and Petitioner filed a Reply (Paper 22; “Reply”). An oral
`hearing was held on March 4, 2016. A transcript of the hearing has been
`entered into the record. Paper 35 (“Tr.”).
`The Board has jurisdiction under 35 U.S.C. § 6(c). In this Final
`Written Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R.
`§ 42.73, we determine that Petitioner has shown by a preponderance of the
`evidence that certain claims for which trial is instituted, namely, claims 1–5,
`7, 11–13, 15–17, 19–21, 23, 30–38, 52, and 53, are unpatentable.
`Related Matters
`A.
`The parties indicate that the ’584 patent is the subject of the following
`district court proceeding, among others: CeraMedic, LLC v. CeramTec
`GmbH, Civil Action No. 3:14-cv-001969 (N.D. Ind.). Pet. 1; Paper 4, 1.
`The ’584 patent also is the subject of an inter partes review in IPR2015-
`00424. Pet. 1–2; Paper 4, 1.
`The ’584 Patent
`B.
`The ’584 patent, titled “Sintered Al2O3 Material, Process for its
`Production and Use of the Material,” issued on May 23, 2000. The ’584
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`patent describes “sintered Al2O3 compositions produced from corundum
`powder and also methods for the use of the invented compositions as
`medical implants or tool material.” Ex. 1001, Abstract. An initially
`unsintered precursor having a relative density of ρ 55%1 is produced from
`α-Al2O3 powder having defined properties using at least two different
`dispersing methods, and this precursor is subsequently subjected to heat
`treatment and sintering. Id. The sintered material is characterized in part
`“by means of a dimensionless defect density,” or “DDD,” defined as the sum
`of the squares of the defect sizes per area analyzed. Id. at 4:16–20.
`C.
`Illustrative Claim
`Claim 1 of the ’584 patent is reproduced below:
`1. A method, comprising the steps of:
`a) dispersing α-Al2O3 powder having a mean particle size
`d50 of 0.30 μm and a chemical purity of 99.9%
`α-Al2O3 in an aqueous solution to create a mixture,
`said mixture effected through the application of at least
`two different dispersing methods;
`b) treating said mixture so as to create a shaped unsintered
`body having a relative density of p 55%;
`c) heating said unsintered body; and
`d) sintering said unsintered body so as to create a sintered
`material.
`
`
`Ex. 1001, 15:4–14.
`D.
`Prior Art References Relied Upon by Petitioner
`1. Jiang Tsair Lin, Temperature History and Microstructure of
`Alumina (May 1992) (Ph.D. dissertation, University of California, Berkeley)
`(“Lin”) (Ex. 1002);
`2. U.S. Patent No. 4,777,153 to Sonuparlak & Aksay (“Sonuparlak”)
`(Ex. 1003);
`
`
`1 The symbols
` and ≥ are used interchangeably herein.
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`3. Tsung-Shou Yeh, Effect of green microstructure on the
`densification and microstructural evolution of alumina (Ph.D. dissertation,
`University of Florida) (1989) (reproduced by University Microfilms
`International) (“Yeh”) (Ex. 1004);
`4. Tsung-Shou Yeh & Michael D. Sacks, Low-Temperature Sintering
`of Aluminum Oxide, 71 J. AM. CERAMICS SOC. 841 (1988) (“Yeh & Sacks”)
`(Ex. 1005);
`5. Hiroyuki Mizuta et al., Preparation of High-Strength and
`Translucent Alumina by Hot Isostatic Pressing, 75 J. AM. CERAMICS SOC.
`469 (1992) (“Mizuta”) (Ex. 1006);
`6. U.S. Patent No. 4,647,477 to DeLuca (“DeLuca”) (Ex. 1007);
`7. D. Cannell & P. Trigg, Processing of Electronic Ceramics, 1
`ADVANCED CERAMIC PROCESSING & TECH. 95 (Jon G.P. Binner ed., 1990)
`(“Cannell”) (Ex. 1008); and
`8. Martin P. Jones & Gerald V. Blessing, Real-Time Ultrasonic
`Nondestructive Evaluation of Green State Ceramic Powders During
`Compaction, 2 NONDESTRUCTIVE TESTING COMM. 155 (1986) (“Jones”)
`(Ex. 1009).
`
`E.
`
`Instituted Grounds of Unpatentability
`We instituted inter partes review on the following grounds of
`unpatentability asserted in the Petition:
`Reference(s)
`Basis
`Lin
`§ 102(b)
`
`Claim(s) Challenged
`1, 4, 5, 30, 33, 34, 52,
`and 53
`7, 12, 13, and 37
`
`36
`
`3, 19, 20, 23, and 31
`
`7, 11, 13, 32, and 37
`
`35
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`12 and 38
`
`Yeh
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`Lin
`
`Lin and Sonuparlak
`
`Lin and Yeh
`
`Lin, Yeh & Sacks, and Mizuta
`
`Lin, Yeh, and Sonuparlak
`
`§ 102(b)
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
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`§ 103
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`Lin, DeLuca, and Cannell
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`§ 103
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`15–17
`
`Lin, Sonuparlak, and Yeh & Sacks § 103
`
`Lin and Jones
`
`Yeh
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`Yeh and Sonuparlak
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`Yeh and Lin
`
`
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`§ 103
`
`§ 103
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`§ 103
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`§ 103
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`21
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`2
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`8–10
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`38
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`II. ANALYSIS
`
`A.
`
`Claim Construction
`The Board interprets claim terms in an unexpired patent according to
`the broadest reasonable construction in light of the specification of the patent
`in which they appear. See Cuozzo Speed Techs., LLC v. Lee, No. 15–446,
`2016 WL 3369425, at *12 (U.S. June 20, 2016) (upholding the use of the
`broadest reasonable interpretation standard); 37 C.F.R. § 42.100(b). Under
`that standard, and absent any special definitions, we give claim terms their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art at the time of the invention. See In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim
`terms must be set forth with reasonable clarity, deliberateness, and precision.
`See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Only those terms
`which are in controversy need to be construed, and only to the extent
`necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`In our Decision on Institution, we construed “dispersing α-Al2O3
`powder . . . in an aqueous solution to create a mixture” to mean “causing α-
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`Al2O3 powder to become or continue being distributed throughout an
`aqueous solution.” Dec. 5–6. We construed “dispersing methods” to mean
`“methods that cause α-Al2O3 powder to become or continue being
`distributed throughout an aqueous solution.” Id. at 6–7. We determined that
`the phrases “treating said mixture so as to create a shaped unsintered body”
`and “treating said mixture with a pressure process so as to create an
`unsintered precursor having a relative density of ρ ≥ 55%” needed no
`express construction. Id. at 7–8.
`The parties discuss and apply these claim constructions, but neither
`party presents arguments or evidence persuasive to modify them in light of
`the record developed at trial. See infra Section II.B.i.c. Accordingly, we
`maintain our construction of the term “dispersing α-Al2O3 powder . . . in an
`aqueous solution to create a mixture” to mean “causing α-Al2O3 powder to
`become or continue being distributed throughout an aqueous solution” and
`“dispersing methods” to mean “methods that cause α-Al2O3 powder to
`become or continue being distributed throughout an aqueous solution.”
`All other terms are accorded their ordinary and customary meaning as
`would have been understood by one of ordinary skill at the time of the
`invention. To the extent that any term requires express construction for the
`purposes of this decision, we discuss that construction in our analysis of the
`grounds of unpatentability.
`B.
`Anticipation Arguments
`“A claim is anticipated only if each and every element as set forth in
`the claim is found, either expressly or inherently described, in a single prior
`art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
`631 (Fed. Cir. 1987). Anticipation requires “that the reference describe not
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`only the elements of the claimed invention, but also that it describe those
`elements ‘arranged as in the claim[.]’” Net MoneyIN, Inc. v. VeriSign, Inc., 545
`F.3d 1359, 1371 (Fed. Cir. 2008) (quoting Finisar Corp. v. DirecTV Grp., Inc.,
`523 F.3d 1323, 1334 (Fed. Cir. 2008)).
`
`i. Lin
`Petitioner challenges claims 1, 4, 5, 30, 33, 34, 52, and 53 as
`anticipated under 35 U.S.C. § 102(b) by Lin. Pet. 3. Lin is a thesis directed
`to methods of preparing sintered Al2O3 material, using high-purity α-Al2O3
`powder with an average particle size of 0.18 μm as a starting material.
`Ex. 1002, 36.2 Lin discloses dispersing α-Al2O3 powder in water (id. at 36–
`37) and slip casting the mixture with a resulting “green compact” of about
`0.61–0.63 of theoretical density (id. at 40). Lin also discloses treating the α-
`Al2O3 powder mixture by a process that includes uniaxial dry pressing and
`cold isostatic pressing. Id. at 39. Lin subsequently discloses heating the
`green compact (id. at 40–41), and sintering the unsintered bodies to create a
`sintered material (id. at 42, 108).
`Petitioner argues that Lin discloses every element of claims 1, 4, 5,
`30, 33, 34, 52, and 53. Pet. 14–18, 20–21, 27–28, 46–49. Regarding the
`dispersing step, Petitioner argues that Lin discloses that the α-Al2O3 powder
`was dispersed in water “to create a mixture by applying two dispersing
`methods as follows: (i) ‘α-Al2O3 powder was dispersed in deionized water,’
`which resulted in a ‘dilute dispersed aqueous suspension’ (Lin at 36–37); (ii)
`after this initial dispersing, ‘[a]n ultrasonic probe was applied to the Al2O3
`suspension’ (Id. at 37).” Pet. 15. Regarding claim 52, which requires
`
`
`2 Our citations to page numbers of the non-patent literature prior art
`generally follow Petitioner’s pagination.
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`“treating said mixture with a pressure process so as to create an unsintered
`precursor having a relative density of ρ ≥ 55%,” Petitioner argues that Lin’s
`disclosure of uniaxial dry pressing and cold isostatic pressing meets this
`limitation. Id. at 47–48 (pointing out that claim 53, which depends from
`claim 52, implicitly defines the “pressure process”).
`(a) Two different dispersing methods
`Patent Owner argues that Lin does not expressly disclose at least two
`different dispersing methods, as required by claim 1. PO Resp. 4. Patent
`Owner characterizes Petitioner’s allegations as an inherency argument
`regarding the two different dispersing methods: “(i) an unnamed purported
`dispersing method that led to the ‘dilute dispersed aqueous suspension of 2
`vol% solid concentration,’ which Petitioner claims cannot be ultrasonication;
`and (ii) the application of an ultrasonic probe ‘to the Al2O3 suspension for
`about 10 minutes to break down the soft agglomerates.’” Id. (citing Pet. 15–
`16; Ex. 1002, 36–37). Patent Owner argues that Lin does not inherently and
`unavoidably disclose “two different dispersing methods,” citing the example
`given by its expert that Lin could ultrasonicate twice. Id. at 5–6 (citing Ex.
`2008 ¶ 68).
`Petitioner responds that Lin “expressly discloses two different
`dispersing methods: a first method that it does not name and a second one
`that it does (ultrasound).” Reply 2; Tr. 19:9–12. Petitioner argues that it
`“strains credulity to suggest that Lin ultrasonicated once to initially disperse
`the powder and then again at a higher power, but only disclosed the second
`ultrasonication step.” Reply 2 (citing Ex. 1020 ¶ 9). Petitioner’s expert
`opines that in order for ultrasonication to be able to disperse powder
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`particles, “the particles need to already be wetted and incorporated into the
`liquid.” Ex. 1020 ¶ 9.
`It is not disputed that the cited portion of Lin discloses two dispersing
`steps that occur at discrete points in time. It is disputed whether these two
`discrete dispersing steps are different dispersing steps. The second
`dispersing method involves application of an ultrasonic probe to the Al2O3
`suspension. Ex. 1002, 36–37. At that point, an Al2O3 suspension is already
`created. Although Lin’s first dispersing method is not named, it requires
`that “Al2O3 powder was dispersed in deionizied water” such that a “dilute
`dispersed aqueous suspension of 2 vol% solid concentration was prepared.”
`Id. at 37. Thus, in Lin’s first dispersing method, Al2O3 powder is introduced
`to liquid to create a dilute dispersed aqueous solution. Our construction of
`dispersing method encompasses “methods that cause α-Al2O3 powder to
`become or continue being distributed throughout an aqueous solution.”
`Certain Examples of the ’584 patent provide that the powders “were
`introduced” as part of the first dispersing step. Ex. 1001, 11:39–40, 12:63,
`14:3. Introducing dry powder to liquid is a method that causes the powder to
`become distributed throughout an aqueous solution. This is a dispersing
`method that is different than ultrasonication. Even if powder were
`introduced to liquid, and ultrasonicated at the same time, this still is a
`“different” dispersing method than ultrasonication alone by virtue of the
`introduction to liquid step. Thus, Lin discloses two different dispersing
`methods.
`(b) Third dispersing method
`In the alternative, Petitioner, in its Reply arguments concerning
`anticipation by Lin, refers to a third dispersing method disclosed in Lin.
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`Reply 3. Petitioner originally presented this third dispersing method in
`support of its claim 32 arguments based on obviousness over Lin and Yeh,
`rather than its claim 1 arguments based on anticipation by Lin. Pet. 24–25.
`There, Petitioner argued that Lin provides that “the suspension was ‘stirred
`continuously’ while being ‘flash dried under an infrared lamp.’” Id. (citing
`Ex. 1002, 37). Petitioner now argues that Lin’s stirring step may be a third
`dispersing method that causes α-Al2O3 powder to become or continue being
`distributed throughout an aqueous solution. Reply 3. Regarding the stirring
`disclosed in Lin, Petitioner states that “it is a third dispersing method and
`claim 32 is dependent on claim 1. So if you were to find that claim 32 was
`invalid, then you would have to consider whether the independent claim was
`also invalid for the same reasons.” Tr. 21:4–8.
`Patent Owner argues that “Lin discloses different types of
`experiments, one slip casting, one is uniaxial dry pressing,” and that
`Petitioner relied on the slip casting embodiment for anticipation by Lin.
`Tr. 28:25–29:4. Patent Owner argues that the stirring, i.e., the third
`dispersing method, referenced by Petitioner is in the context of the uniaxial
`dry pressing embodiment, which is a different embodiment than the slip
`casting embodiment. Id. at 29:10–14. Petitioner responds that its expert
`testimony supports that, in the slip casting embodiment, Lin “would have
`also dried and stirred to get to the 40 percent solution that is slip cast.”
`Tr. 73:3–8, 74:2–4 (quoting Ex. 1020 ¶ 10).
`We note the statutory requirement that the initial Petition should
`identify “with particularity” the “evidence that supports the grounds for the
`challenge to each claim.” 35 U.S.C. § 312(a)(3). A petition must include
`“[a] full statement of the reasons for the relief requested, including a detailed
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`explanation of the significance of the evidence including material facts, and
`the governing law, rules, and precedent.” 37 C.F.R. § 42.22(a)(2).
`Moreover, “[a] reply may only respond to arguments raised in the
`corresponding . . . patent owner response.” Id. § 42.23(b). “While replies
`can help crystalize issues for decision, a reply that raises a new issue or
`belatedly presents evidence will not be considered and may be returned.”
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14,
`2012).
`We weigh our application of these statutes and rules with the principle
`that the “development of evidence in the course of the trial is in keeping with
`the oppositional nature of an inter partes review proceeding.” Genzyme
`Therapeutic Prods. v. Biomarin Pharm., Nos. 2016-1720, 2015-1721, 2016
`WL 3254734, at *4 (Fed. Cir. June 14, 2016). The critical question for
`compliance with the APA and due process is whether a party received
`“adequate notice of the issues that would be considered, and ultimately
`resolved, at that hearing.” Id. at *5. We are persuaded that the Petition’s claim
`32 arguments, in which Yeh was combined with Lin for an obviousness
`argument, adequately put Patent Owner on notice of Petitioner’s arguments
`that Lin’s third dispersing method—stirring—could be another dispersing
`method in Petitioner’s anticipation argument for claim 1 based on Lin. Here,
`Lin is the only prior art upon which Petitioner bases its anticipation argument,
`and Lin identifies a third dispersing method in close textual proximity to the
`identification of the first two dispersing methods. Ex. 1002, 37 (listing stirring
`on the same page, in the same paragraph, and only four lines after discussing
`ultrasonication). Patent Owner was made aware of this third dispersing method
`in Petitioner’s case-in-chief, albeit regarding a different claim. Under the
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`particular circumstances presented here, we are persuaded that the disclosure in
`Lin, relating to the stirring step, was fairly raised in the Petition and that Patent
`Owner was given a fair opportunity to address its import in this proceeding.
`We acknowledge Patent Owner’s argument that it was unable to
`respond fully to Petitioner’s argument. Tr. 28:15–16. However, Patent
`Owner was able to cross-examine Petitioner’s expert on this issue, and
`submitted its Motion for Observations on Cross-Examination. Paper 29.
`Patent Owner could have, but did not, request a sur-reply to brief this issue;
`Patent Owner also did not file a motion to exclude portions of Petitioner’s
`expert testimony. See Genzyme, 2016 WL 325734, at *6; see also Belden,
`Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1081 (Fed. Cir. 2015) (identifying
`options for Patent Owner faced with new evidence in Reply). Based on the
`arguments before us and the evidence cited therein, we agree that Petitioner
`has provided adequate explanation and evidence to support its contention
`that Lin discloses stirring as a third dispersing method.
`(c) Intensive dispersing methods
`Patent Owner also argues that, based on the record developed after
`institution, Lin does not even disclose two “dispersing methods.” PO
`Resp. 7. According to Patent Owner and its expert, “dispersing methods”
`refers to “intensive dispersing techniques, of which mechanical stirring, ball
`milling, and ultrasonication are examples identified in the ’584 Patent.” Id.
`(citing Lilley Dec. ¶¶ 62–67). Consistent with its position that “dispersing
`methods” means “intensive dispersing techniques,” Patent Owner argues that
`Lin discloses only one dispersing method: ultrasonication. Id. at 8.
`Petitioner responds that whatever Lin did to create its dispersed
`aqueous suspension must have involved causing the alumina powder to
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`become distributed throughout the solution, in line with the Board’s
`construction. Reply 1–2. Petitioner argues that nothing in the record
`supports that Patent Owner’s proffered interpretation is the broadest
`reasonable construction of the phrase. Id. at 2.
`We agree with Petitioner and retain our original claim construction
`concerning dispersing methods. Patent Owner’s urged interpretation would
`require us to import examples from the Specification into the claim, which
`we decline to do. SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870,
`875 (Fed. Cir. 2004); In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
`1993). Patent Owner’s argument that “dispersing” must mean “intensive
`dispersing” is not supported by the evidence of record.
`(d) Claims 52 and 53
`Regarding claims 52 and 53, Patent Owner argues that “Lin’s uniaxial
`dry pressing embodiment does not disclose ‘treating said mixture with a
`pressure process so as to create an unsintered precursor having a relative
`density of ρ ≥ 55%’” as recited in Claim 52.” PO Resp. 10. According to
`Patent Owner, “Lin’s uniaxial dry pressing creates a shaped specimen with a
`density of only 0.53 of theoretical density, for a relative density less than
`55%.” Id. Petitioner’s reliance on the 0.60 ± 0.01 relative density for the
`post-cold-isostatic-pressing green compacts in Lin, according to Patent
`Owner, is flawed in that cold isostatic pressing in Lin is not part of Lin’s
`“treating said mixture with a pressure process so as to create an unsintered
`precursor.” Id. at 10–11. Patent Owner avers that “cold isostatic pressing
`takes place after any purported ‘treating’ step in Lin.” Id. at 11.
`Petitioner responds that neither the claim language of claim 52 nor the
`Specification supports Petitioner’s interpretation effectively limiting step (b)
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`to processes with only one compaction step. Reply 4 (noting that several
`Examples in the Specification use two compaction steps). Rather, Petitioner
`argues, a “pressure process that increases the relative density of a compact
`from below 55% to above 55% ‘creates’ an unsintered precursor with ≥ 55%
`relative density, even if another compaction step is performed first.” Id.
`We are not persuaded that the cold isostatic pressing takes place
`outside of or after the treating step in Lin. We agree with Petitioner’s
`analysis regarding the claims being flexible enough to allow for creation of
`an unsintered precursor using more than a single compaction step, thereby
`obtaining the required relative density of ρ 55%.
`As noted by both parties, claims 52 and 53 also require “two different
`dispersing steps.” Our analysis regarding this limitation in claim 1 applies
`equally to this limitation in claims 52 and 53 as well as dependent claims 4,
`5, 30, 33, and 34. Patent Owner limits its arguments regarding dependent
`claims 4, 5, 30, 33, and 34 to those already discussed above for claim 1. Our
`review of the Petition and the evidence presented in support of Petitioner’s
`challenge to claims 4, 5, 30, 33, and 34 persuades us that Lin anticipates
`those claims.
`We have reviewed the arguments presented in the Petition and the
`supporting evidence regarding the anticipation of the remaining elements of
`claims 1, 4, 5, 30, 33, 34, 52, and 53 that were not disputed by Patent Owner
`in its Response. Pet. 14–18, 20–21, 27–28, 46–49. In the Scheduling Order,
`we cautioned Patent Owner that any arguments for patentability not raised in
`the Response would be deemed waived. Paper 12, 3. After reviewing the
`arguments and evidence presented concerning the remaining claim elements
`of claims 1, 4, 5, 30, 33, 34, 52, and 53 (see Pet. 14–18, 20–21, 27–28, 46–
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`49, discussing the remaining claim elements of these claims), we find a
`preponderance of the evidence establishes that Lin expressly discloses the
`remaining elements of claims 1, 4, 5, 30, 33, 34, 52, and 53.
`In sum, we are persuaded by Petitioner’s argument that Lin anticipates
`claim 1, its challenged dependent claims 4, 5, 30, 33, and 34, and claims 52
`and 53.
`ii. Yeh
`
`Petitioner challenges claims 7, 12, 13, and 37 as anticipated under
`35 U.S.C. § 102(b) by Yeh. Pet. 5. Yeh is a thesis that discloses methods of
`preparing sintered Al2O3 material, using commercially-available, high-purity
`(>99.99%) alumina powders. Ex. 1004, 69. The “intermediate size
`distribution” (“ISD”) powder disclosed in Yeh has a median particle size
`(d50) of 0.39 μm. Id. at 293–296. Yeh discusses at least three different
`methods of creating a mixture of ISD powder in aqueous solution: stirring
`(id. at 72), ultrasonication (id. at 76), and mixing (id.). Yeh also discloses
`slip casting the mixture, resulting in a green compact having a relative
`density of 70%. Id. at 316. The green compact of Yeh is air-dried and
`further dried by heating (id. at 76) and sintered in air to create a sintered
`material (id. at 78).
`Petitioner argues that Yeh discloses every element of claims 7, 12, 13,
`and 37. Pet. 33–36, 39–40, 43–45. Regarding the particle size distribution
`of Yeh’s ISD powder, Petitioner relies on the Clarke Declaration to argue
`that the geometric standard deviation for the ISD powder is 1.7, and thus the
`d84 value is well above 0.45 μm, and the d16 value is necessarily greater than
`0.065 μm. Pet. 35 (citing Ex. 1013 ¶¶ 56– 57; Ex. 1004, 294, Fig. 5.1).
`With respect to the dispersing step of claim 7 and the dispersing methods
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`applied in series of claim 37, Petitioner argues that Yeh discloses at least
`three different dispersing methods, applied in series: first stirring, then
`ultrasonication, then mixing. Id. at 35–36, 45. Petitioner argues that Yeh
`discloses the treating, heating, and sintering steps of claim 7 as well. Id. at
`39–40.
`Patent Owner argues that Yeh does not disclose all of the limitations
`of claim 7 as arranged in the claim, either expressly or inherently. PO Resp.
`12–17. Patent Owner argues that “as Claim 7 is arranged, the shaped
`unsintered body must achieve a relative density of ρ ≥ 55% in the “treating”
`step before undergoing the “heating” step.” Id. at 13.
`(a) Preliminary heating step
`Petitioner replies that both the claim language and Specification of the
`’584 patent show that step (b) of claim 7 can include a heating step distinct
`from the heating step of step (c). Reply 6. In every Example of the ’584
`patent, Petitioner argues, “the step (b) process of making a shaped unsintered
`body having a relative density of at least 55% includes a preliminary heating
`step.” Id. In Example 1 of the ’584 patent, and other Examples, there is a
`preliminary heating step referred to as “drying”: “[a]fter drying at 80° C.,
`the relative density achieved was 61.0% of the theoretical density.”
`Ex. 1001, 9:65–67. In Example 1, and other Examples, the drying step after
`which density is measured is followed by “preliminary firing” at 800ºC, and
`subsequent pressureless sintering in air at 1400ºC. Id. at 10:1–5. We agree
`with Petitioner that the Examples in the Specification, together with the
`“comprising” language of the claim 7 preamble, allow for a drying step or
`preliminary heating step before the relative density measurement is
`determined.
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`(b) Order of steps
`Regarding the order of steps, however, Patent Owner argues that
`Petitioner does not demonstrate that Yeh meets the limitations of claim 7 as
`they are arranged in claim 7, which provides that “treating said mixture so as
`to create a shaped unsintered body having a relative density of ρ ≥ 55%”
`occurs before “heating said unsintered body.” PO Resp. 13. Patent Owner
`argues that the order of steps is critical. Tr. 30:10–12.
`Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323,
`1342–43 (Fed. Cir. 2001) recites a two-part test for determining if the steps
`of a method claim that do not otherwise recite an order, must nonetheless be
`performed in the order in which they are written. First, we look to the claim
`language to determine if, as a matter of logic or grammar, they must be
`performed in the order written. Id. If not, we next look to the rest of the
`specification to determine whether it “directly or implicitly requires such a
`narrow construction.” Id. at 1343. If not, the sequence in which such steps
`are written is not a requirement. Altiris, Inc. v. Symantec Corp., 318 F.3d
`1363, 1369–70 (Fed. Cir. 2003). In the present situation, the claim language
`indicates that the steps must be performed in the order written in order to
`achieve the claimed result. Performing the dispersing step after the treating
`step, for example, would be illogical and very likely impossible. The
`Specification also indicates that the method is stepwise, in that each step
`physically alters the characteristics of the material on which it is performed.
`Thus, the sequence in which the steps are taken is a requirement in this case.
`As discussed below, this sequence of steps is critical to our analysis of
`whether Yeh discloses the treating and heating steps of claim 7.
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`(c) Mercury porosimetry and Archimedes displacement
`Patent Owner explains that Yeh’s measurement of relative density of
`the slip cast bodies was done by (a) mercury porosimetry, which was done
`after the slip cast bodies “spent 24 hours in an oven at 90ºC and very likely
`also underwent calcining,” (PO Resp. 13) and (b) Archimedes displacement,
`which was done after placing the slip cast bodies “in an oven for 24 hours at
`90ºC and calcining them at 700ºC for 30 minutes.” Id. at 14. The green
`density of the slip cast ISD samples measured by these methods was about
`70% relative density. Ex. 1004, 316, 427. “By relying on a post-oven, post-
`calcining relative density in Yeh,” argues Patent Owner, “Petitioner
`improperly combines the “treating” and “heating” steps, ignoring the
`arrangement of Claim 7’s limitations.” Id. at 14–15.
`Regarding mercury porosimetry, Petitioner replies that “Yeh does not
`disclose that the green compacts were calcined before the mercury
`porosimetry measurements” that gave a relative density of about 70% for the
`green compacts. Reply 7. Regarding Archimedes displacement, Petitioner
`agrees that Yeh discloses calcining before the Archimedes displacement
`relative density measurement. Id. In view of Yeh’s mercury porosimetry
`measurements in which calcining was not performed, argues Petitioner, Yeh
`achieved the relative density required. Id. at 8. Patent Owner’s expert Dr.
`Lilley opines that Yeh would have “very likely also calcined the cast body
`before measuring its relative density by mercury porosimetry.” Ex. 2008
`¶¶ 76, 80 (emphasis added). Petitioner’s expert Dr. Clarke opines that it is
`not necessary to calcine before mercury porosimetry. Ex. 1020 ¶ 13.
`We agree that there is nothing in Yeh indicating that calcining
`occurred before measurement of relative density by mercury porosimetry.
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`Given the lack of an explicit statement in Yeh regarding calcining in
`connection with mercury porosimetry, and the nondispositive testimony of
`the experts on this issue, we decline to read a calcining step into the mercury
`porosimetry measurement of Yeh when the evidence does not support that a
`person of ordinary would have understood such a step to be present.
`Patent Owner also argues that Petitioner changed its position on its
`anticipation by Yeh arguments. Tr. 44:16–17. The parties do not appear to
`dispute that Yeh discloses the at least two different dispersing methods of
`step (a) of claim 7. Pet. 34–36; PO Resp. 12–17. The parties also do not
`appear to dispute that Yeh discloses the sintering step (d) of claim 7. Pet.
`40; PO Resp. 12–17.
`The dispute, therefore, centers on the order of treating step (b) a
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