Trials@uspto.gov
`571-272-7822
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` Paper No. 29
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` Entered: June 27, 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.
`____________
`
`IPR2015-00424
`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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`IPR2015-00424
`Patent 6,066,584
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`I.
`INTRODUCTION
`Petitioner CeramTec GmbH filed a Petition (Paper 2, “Pet.”) to
`institute an inter partes review of claims 14 and 26–29 of U.S. Patent
`No. 6,066,584 (Ex. 1101, “the ’584 patent”) pursuant to 35 U.S.C. §§ 311–
`319. Patent Owner CeraMedic LLC filed a Preliminary Response (Paper 6,
`“Prelim. Resp.”). We instituted an inter partes review of claims 14 and 26–
`29 on one of the grounds of unpatentability alleged in the Petition (Paper 9,
`“Dec.”). After institution of trial, Patent Owner filed a Patent Owner
`Response (Paper 15, “PO Resp.”) and Petitioner filed a Reply (Paper 17,
`“Reply”). An oral hearing was held on March 4, 2016. A transcript of the
`hearing has been entered into the record. Paper 28 (“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 all claims for which trial was instituted, namely, claims 14 and
`26–29, are unpatentable.
`A.
`Related Matters
`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-01969 (N.D. Ind.). Pet. 1; Paper 4, 1. The
`’584 patent also is the subject of an inter partes review in IPR2015-00398.
`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
`patent describes “sintered Al2O3 compositions produced from corundum
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`powder and also methods for the use of the invented compositions as
`medical implants or tool material.” Ex. 1101, Abstract. An initially
`unsintered precursor having a relative density of ρ 55% 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 Claims
`Claims 14 and 26 of the ’584 patent are reproduced below:
`14. The sintered material produced according to claim 7,1
`wherein said sintered material comprises a mean grain size of
`2.0 μm or less, a density of no less than 98.5% of a theoretical
`density, a Vickers hardness greater than or equal to 1,750 at a
`test load from 10 to 100 N, and a flexural strength of 800 MPa
`
`
`1 Claim 7 provides: “A method, comprising the steps of: a) dispersing α-
`Al2O3 powder having a particle size of d16 greater than 0.065 μm, d50 not less
`than 0.2 μm and not greater than 0.4 μm, d84 not less than 0.45 μm and not
`greater than 0.8 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. 1101, 15:39–52. We note that
`claim 14 is a product-by-process claim. See In re Thorpe, 777 F.2d 695, 697
`(Fed. Cir. 1985) (internal citations omitted) (noting that “even though
`product-by-process claims are limited by and defined by the process,
`determination of patentability is based on the product itself. The
`patentability of a product does not depend on its method of production. If
`the product in a product-by-process claim is the same as or obvious from a
`product of the prior art, the claim is unpatentable even though the prior
`product was made by a different process”).
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`or greater, said sintered material having a dimensionless defect
`density of less than 30x10-3.
`
`
`Ex. 1101, 16:1–7.
`
`
`26. Sintered Al2O3 material comprising a mean grain size of
`2.0 μm or less, and a density of no less than 98.8% of a
`theoretical density, a Vickers hardness greater than or equal
`to 1,750 at a test load from 10 to 100 N, and a flexural strength
`of 800 MPa or greater, said sintered material having a
`dimensionless defect density of less than 30x10-3.
`
`
`Ex. 1101, 16:66–17:4. Claims 27–29 depend from claim 26. Each
`challenged claim requires a specific DDD, ranging from less than 30x10-3
`(claims 14 and 26) to 0.6x10-3 (claim 29).
`Prior Art Reference Relied Upon by Petitioner
`D.
`Petitioner relies on the following prior art reference in the instituted
`challenge: Japanese Patent Application Publication No. JP 1990255563,
`published October 16, 1990 (“Igarashi”) (Ex. 1103).2
`Instituted Grounds of Unpatentability
`E.
`We instituted inter partes review on the following ground of
`unpatentability asserted in the Petition: Claims 14 and 26–29 under 35
`U.S.C. § 103(a) as unpatentable over Igarashi.
`
`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
`
`
`2 Exhibit 1103 is a certified translation of the original Japanese Patent
`Application Publication; Exhibit 1113 is the original untranslated version.
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`in which they appear. See In re Cuozzo Speed Techs., LLC, 793 F.3d 1268,
`1278–79 (Fed. Cir. 2015), aff’d sub nom. 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).
`Petitioner argues that “dimensionless defect density” should be
`construed to mean “the sum of the squares of the defect sizes per area
`analysed.” Pet. 12. The Specification expressly defines “dimensionless
`defect density” as “the sum of the squares of the defect sizes per area
`analysed.” Ex. 1101, 4:19–20. Regarding defect size, the Specification
`expressly states: “Here, the defect size employed is the maximum
`recognizable extent of the defect in any direction in the analysed plane.” Id.
`at 4:22–24. Thus, we construed the term “dimensionless defect density” to
`mean “the sum of the squares of the defect sizes per area analysed, wherein
`each defect’s size is the maximum recognizable extent of that defect in any
`direction in the analysed plane.” Dec. 5.
`Neither party specifically addresses or contests this claim
`construction. We see no reason to modify it in light of the record developed
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`at trial. Accordingly, we maintain our construction of the term
`“dimensionless defect density” to mean “the sum of the squares of the defect
`sizes per area analysed, wherein each defect’s size is the maximum
`recognizable extent of that defect in any direction in the analysed plane.”
`All other terms are accorded their ordinary and customary meaning as
`would be understood by one of ordinary skill at the time of the invention.
`B.
`Obviousness Argument
`In resolving the question of the obviousness of the claims, we
`consider the following underlying factual determinations: (1) the scope and
`content of the prior art; (2) any differences between the claimed subject
`matter and the prior art; (3) the level of skill in the art; and (4) secondary
`considerations of nonobviousness. See Graham v. John Deere Co., 383 U.S.
`1, 17 (1966). Petitioner bears the burden of establishing obviousness of the
`challenged claims by a preponderance of the evidence. 35 U.S.C. § 316(e).
`i.
`Igarashi (Ex. 1103)
`Igarashi discloses an alumina sintered body for tools, specifically,
`ceramic materials for cutting tools, abrasion-proof tools, and corrosion-proof
`tools. Ex. 1103, 2. Igarashi claims an alumina sintered body “comprising
`substantially pure alumina with 99.7 % – 99.99 % (by weight) of alumina,”
`wherein “the alumina sintered body has particle size: 0.5 μm – 2 μm;
`density: 3.95 g/cm2 or more; Vickers hardness (10 kg load): 1,850 kgf/mm2
`– 2,000 kgf/mm2; transverse intensity: 700 MPa or higher.” Id. Igarashi
`notes that it is “important to increase critical strength whereat a crack will
`not occur,” making it “necessary to thoroughly eliminate pores, minute
`cracks, abnormal particles and foreign matters that will be strength defects”
`and “bring density of the sintered body close to theoretical density.” Id. at 4.
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`Arguments
`ii.
`Petitioner asserts that claims 14 and 26–29 are unpatentable under
`35 U.S.C. § 103 in view of Igarashi. Pet. 21–29. Petitioner’s contentions
`are supported by two Declarations of David R. Clarke, Ph.D. Ex. 1112; Ex.
`1115. In opposition to Petitioner’s contentions, Patent Owner relies on the
`Declaration of Edward Lilley, Ph.D. Ex. 2114.
`Petitioner argues, first, that Igarashi contains all the limitations of
`claim 14, apart from DDD. Pet. 22. Regarding DDD, Petitioner argues that
`it “would have been obvious to a person of ordinary skill in the art based on
`the teachings of Igarashi to create a material having a DDD less than 30x10-3
`and meeting all the other requirements of claim 14.” Id. According to
`Petitioner, “it would have been obvious to create a material meeting this
`limitation because doing so would have required nothing more than routine
`optimization of a recognized result-effective variable.” Id. (citing In re
`Boesch, 617 F.2d 272, 276 (CCPA 1980)); Tr. 7:11–25.
`Dr. Clarke opines that it was “well within the capabilities of a person
`of ordinary skill in the art to create a material that had a DDD less than
`30x10-3 and that met the other requirements of claim 14.” Pet. 23 (citing Ex.
`1112 ¶¶ 55–63). Petitioner also relies on Dr. Clarke’s analysis of different
`prior art disclosures that “describe sintered Al2O3 materials having density
`and grain size values within the claimed ranges and that also show defect-
`free micrographs.” Id. at 24 (citing Ex. 1112 ¶¶ 56–60). Because “Igarashi
`discloses a sintered Al2O3 material that expressly meets the density, grain
`size, hardness, and strength limitations of claim 14,” and because “[a]t most,
`DDD was simply a new way of putting a number on a parameter—namely,
`defect structure—that had long been recognized as affecting strength,”
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`Petitioner argues that the claimed materials “are not new or non-obvious
`simply by virtue of having had their defects quantified in a particular way.”
`Id. at 25–26.
`
`Patent Owner argues that the claimed materials are not taught,
`suggested, or disclosed by Igarashi. PO Resp. 6. Specifically, Patent Owner
`argues, sintered materials with both the claimed DDD and other mechanical
`properties recited by the challenged claims were not known in the prior art,
`which “did not identify or suggest using dimensionless defect density as a
`parameter for characterizing ceramics.” Id. at 6, 9. Patent Owner also
`argues that DDD is “inventively different” from “the number and size of
`defects” and that developing ceramics with the specified DDD and other
`claimed mechanical properties would be anything but obvious. Id. at 10, 14.
`Merely reducing the number and size of defects, argues Patent Owner,
`would not necessarily optimize the DDD, and numerous parameters and
`process steps can affect a material’s DDD. Id. at 17–18. Similarly,
`numerous parameters and process steps can affect flexural strength, Vickers
`hardness, and average grain size, according to Patent Owner. Id. at 22.
`Patent Owner maintains that the ’584 patent “in no way is saying or
`admitting that . . . everyone knew about this DDD and you should optimize
`the DDD as the petitioner suggests.” Tr. 56:13–15.
`
`Petitioner reiterates that optimization to reduce defects, as taught by
`Igarashi, reduces DDD. Reply 2. According to Petitioner, Igarashi provides
`specific guidance for minimizing defects. Id. at 8. Responding to Patent
`Owner’s arguments, Petitioner argues again that the claimed materials were
`not inventive, and persons of ordinary skill in the art could avoid defects
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`without compromising strength, hardness, grain size, or density. Id. at 12,
`16; Tr. 70:21–71:4.
`
`We are persuaded by Petitioner’s arguments and evidence that the
`factors that Igarashi seeks to optimize would lead to a lower DDD. In re
`Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). Petitioner
`notes that Igarashi teaches the “well-known principle that the number and
`size of defects in a material affect strength and that it is, therefore, desirable
`to eliminate microstructural defects in sintered materials,” and that even
`the ’584 patent acknowledges the relationship between defect structure and
`strength of brittle solids. Pet. 22. Specifically, Igarashi discloses that, to
`increase critical strength and prevent cracking, “it is necessary to thoroughly
`eliminate pores, minute cracks, abnormal particles and foreign matters that
`will be strength defects.” Ex. 1103, 4. The ’584 patent states that “the
`relationship between defect structure and strength of brittle solids has been
`well known for a long time.” Ex. 1101, 2:3–5. As discussed by Dr. Clarke:
`“Before the filing date of the ’584 Patent, persons of ordinary skill in the art
`recognized that flexural strength is dependent on the number and size of
`defects, such as pores and voids, which is the variable that DDD attempts to
`quantify.” Ex. 1112 ¶ 54; see also Ex. 1114, 40:21–25, 67:19. In the
`present case, attempts to minimize defects, such as pores or voids, is
`optimization of a result-effective variable. The quantification of such an
`effort to minimize defects, whether by DDD or otherwise, does not by itself
`render nonobvious materials with a particular DDD measurement.
`The record shows that, although DDD may have been known as early
`as 1987 (Ex. 1101, 4:15–23; Tr. 66:19–67:15), “DDD itself was not (and is
`not) accepted in the field as a standard for evaluating ceramic materials.”
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`Pet. 16. Accordingly, the fact that Igarashi does not specifically identify
`DDD as a result-effective variable is not fatal to Petitioner’s case. “A
`recognition in the prior art that a property is affected by the variable is
`sufficient to find the variable result-effective.” In re Applied Materials, 692
`F.3d at 1297. The evidence of record demonstrates that the factors Igarashi
`seeks to optimize, including fewer pores, smaller cracks, and strength
`defects generally, would lead to a lower DDD. Patent Owner’s and
`Petitioner’s experts confirm that reducing the number and size of defects
`reduces DDD. Ex. 1115 ¶¶ 7–8; Ex. 1114, 32:12–23, 36:18–21.
`Theoretically, “thoroughly eliminating” defects as discussed in Igarashi
`would cause total defect size and DDD to be zero. Ex. 1115 ¶ 8. We also
`note that the material created by Igarashi has higher strength and higher
`relative density than the claimed materials. Pet. 14–16, Reply 15; Ex. 2116,
`70:9–19 (stating that the low-defect material of Igarashi’s Example 1 “might
`encourage [a person of ordinary skill in the art] to try and improve the
`properties even further”). As explained by Dr. Clarke in connection with
`Example 1 of Igarashi, a higher relative density would be a strong indicator
`of the desired DDD: “The higher density necessarily indicates that less of
`the material’s volume was occupied by defects in the form of pores or other
`voids. This would help explain the higher strength. It would also contribute
`to a lower DDD . . . .” See Ex. 1112 ¶ 53.
`We are persuaded that Igarashi’s acknowledgment of the role of
`defects in a material’s strength, Igarashi’s focus on fewer and smaller
`defects, and Igarashi’s instructions for making a strong, dense material
`would lead one of ordinary skill in the art to seek to minimize the number
`and size of defects, leading to a lower DDD. Given the disclosures of
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`Igarashi and the concept that one can achieve increased hardness and
`strength by minimizing the size and number of defects, it would have been
`well within the capabilities of one of ordinary skill to arrive, by routine
`experimentation, at the materials set forth in the challenged claims of the
`’584 patent.
`
`Patent Owner takes the position that the inventors of the challenged
`patent “recognized and recharacterized a problem that they solved by
`developing sintered materials with the specified dimensionless defect
`densities.” PO Resp. 12. We disagree that others had failed to recognize the
`problem before the inventors of the challenged patent did. Generally, Patent
`Owner’s expert states, “eliminating defects is one of the basic goals of
`ceramics manufacturing.” Ex. 2114 ¶ 45. The problem of defect size and
`structure, including large or elongated defects, was already recognized in the
`prior art. Reply 6–7 (citing Ex. 1115 ¶ 10); Tr. 69:11–70:7. What remains
`is the recharacterization of the problem. But simply recharacterizing a
`property—here, measuring defects using DDD as a parameter—does not
`render the recharacterized property or material nonobvious.
`Patent Owner argues that ceramics processing is a complicated, multi-
`factor process, with each factor playing a role in the ultimate defect density.
`PO Resp. 15–26 (discussing, inter alia, hot pressing, hot isostatic pressing,
`sintering time, sintering temperature, type of pressure applied during
`sintering, starting powder, and binders and plasticizers). Patent Owner also
`argues that Igarashi, at most, gives general guidance that it is desirable to
`reduce the number and size of defects. Id. at 15. Obviousness under
`35 U.S.C. § 103, however, does not require absolute predictability. In re
`Kronig, 539 F.2d 1300 (CCPA 1976). It is sufficient here that Igarashi led
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`the way for one of ordinary skill in the art to arrive at the claimed materials.
`We are persuaded, on this point, by Petitioner’s arguments that Igarashi
`gives specific guidance for minimizing defects, including choice of powder,
`milling process, and sintering process. Reply 9–10. We also note that both
`Petitioner’s and Patent Owner’s experts acknowledge that one of ordinary
`skill in the art would be familiar with strategies to avoid defects before the
`’584 patent’s filing date. Id. at 18–19 (citing Ex. 1114, 67:23–68:5, 68:10–
`18, 69:2–12; Ex. 1115 ¶ 29). After consideration of the evidence before us,
`we are persuaded that a person of ordinary skill in the art would have been
`led to reduce defects (and thereby reduce DDD) without compromising other
`properties of the material. Reply 22.
`Petitioner also notes that Patent Owner has not provided any evidence
`that the claimed DDD values are “critical or special in any way.” Id. at 11.
`The outcome of optimizing a result-effective variable may still be patentable
`if the claimed ranges are “critical” and “produce a new and unexpected
`result which is different in kind and not merely in degree from the results of
`the prior art.” In re Aller, 220 F.2d 454, 456 (CCPA 1955) (citation
`omitted); In re Antonie, 559 F.2d 618, 620 (CCPA 1977). There is no
`indication that obtaining the claimed DDD was beyond the capabilities of
`one of ordinary skill in the art, or led to a new and unexpected result
`different in kind from the prior art. Nor, as discussed in more detail below,
`is there sufficient information demonstrating the claimed DDD produced any
`unexpectedly beneficial properties, further supporting Petitioner’s argument
`that optimization of DDD would have been obvious.
`Claim 26 is independent, and claims 27–29 each depend directly from
`claim 26. Petitioner contends these claims are also unpatentable under 35
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`U.S.C. § 103 based on Igarashi. Pet. 26–29. The dependent claims require
`DDD values of 10x10-3 (claim 27), 4x10-3 (claim 28), and 0.6x10-3
`(claim 29). All of these claims nevertheless also require the limitations of
`claim 26, including mean grain size, density, Vickers hardness, and flexural
`strength, which Petitioner has demonstrated to be present in Igarashi. As
`discussed above, we have found Petitioner’s arguments regarding DDD to be
`persuasive as to claim 14, and for the reasons given by Petitioner and for the
`reasons articulated herein, find the same to be persuasive for claims 26–29.
`After review of the full record, we agree with Petitioner’s argument
`that the properties disclosed in Igarashi, as well as Igarashi’s focus on fewer
`and smaller defects, would lead one of ordinary skill in the art to seek to
`minimize the size and number of defects, leading to a lower DDD as
`disclosed in the challenged claims.
`iii.
`Secondary Considerations
`Patent Owner argues that secondary considerations compel a
`conclusion of nonobviousness. PO Resp. 26–33. We, therefore, consider
`this evidence along with the contentions of the parties in reaching our final
`determination as to the obviousness of claims 14 and 26–29.
`Objective indicia of nonobviousness may include any of the
`following: long-felt but unsolved needs, failure of others, unexpected
`results, commercial success, copying, licensing, and praise. Graham, 383
`U.S. at 17; see also Transocean Offshore Deepwater Drilling, Inc. v. Maersk
`Drilling USA, Inc., 699 F.3d 1340, 1349–1355 (Fed. Cir. 2012). Patent
`Owner argues that copying of the claimed invention and unexpected results
`attributable to the claimed invention should be considered. PO Resp. 27.
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`All types of objective evidence of nonobviousness must be shown to
`have a nexus between the evidence and the claimed invention. In re GPAC
`Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). The stronger the showing of
`nexus, the greater the weight accorded the objective evidence of
`nonobviousness. See Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
`776 F.2d 281, 306 (Fed. Cir. 1985).
`a.
`Copying
`Patent Owner asserts that “[i]ndisputable evidence of copying exists.”
`PO Resp. 27. Patent Owner points to U.S. Patent No. 8,485,042 (Ex. 2109,
`“the ’042 patent”), which pertains to manufacturing sintered alumina “elastic
`deformation bodies,” arguing that claims 1 and 12 of the ’042 patent
`substantially mirror claims 14 and 26–29 of the ’584 patent. Id. at 27–28
`(citing Ex. 2109). Patent Owner argues that the nexus “is self-evident” in
`that the owners of the ’042 patent “copied the limitations of Claims 14 and
`26–29 of the ’584 Patent into the claims of the ’042 Patent.” Id. at 29.
`Petitioner replies that Patent Owner has not established copying, in
`that Patent Owner has not presented evidence that the hardness limitation
`was copied, or that any actual product on the market—as opposed to a patent
`document—copied the claimed invention. Reply 23.
`Copying, as objective evidence of nonobviousness, requires evidence
`of effort to replicate a specific product. Wyers v. Master Lock Co., 616 F.3d
`1231, 1246 (Fed. Cir. 2010); Iron Grip Barbell Co., Inc. v. USA Sports, Inc.,
`392 F.3d 1317, 1325 (Fed. Cir. 2004). Like other types of objective
`evidence, evidence of copying must be shown to have nexus. Wm. Wrigley
`Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364 (Fed. Cir. 2012).
`
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`The testimony presented by Patent Owner in support of its copying
`contention is devoid of any evidence from which we could infer that the
`mirroring of language in the ’042 patent constitutes an effort to replicate a
`specific product. See, e.g., Ex. 2114 ¶¶ 94–96 (asserting that the claims in
`the ’042 patent copy or paraphrase the claims of the ’584 patent). The
`allegation that the claims in the ’042 patent are similar to those in the ’584
`patent fails to show that those claims were practiced in any way that would
`constitute copying of the actual materials covered by claims 14 and 26–29.
`Patent Owner has directed us to no legal authority supporting its argument
`that copying of claim language is sufficient to establish copying in the
`context of secondary considerations. Therefore, arguments that the alleged
`copying involves the language of the claims, rather than the product covered
`by the claims, fail to establish the nexus required to support an allegation of
`copying.
`
`Unexpected Results
`b.
`Patent Owner argues that the claimed subject matter of the ’584 patent
`
`achieved at least two unexpected results. PO Resp. 29. First, Patent Owner
`argues, the ’584 patent teaches that “it was extraordinarily surprising that
`sintered products having . . . a Vickers low-load hardness of ≥ 1750 and a
`flexural strength of ≥ 800 MPa could be specified and obtained by producing
`microstructures having a mean grain size of ≤1.5 μm or ≤2.0 μm and a
`relative sintered density of ρ ≥ 98.5%.” Id. at 30 (citing Ex. 1101, 9:9–16;
`Ex. 2114 ¶¶ 97–103). Second, Patent Owner argues, the ’584 patent “also
`achieved unexpectedly superior mechanical properties via pressureless
`sintering in air.” Id. at 31.
`
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`Petitioner replies that Patent Owner has not established unexpected
`results, in that it would not have been surprising to a person of ordinary skill
`in the art to achieve a sintered product with the hardness, strength, grain
`size, and relative density of Patent Owner’s sintered product. Reply 23.
`Specifically, Petitioner contends that Igarashi discloses a material having
`those properties. Id. Petitioner also argues that Igarashi achieved a hardness
`above 1900 using a process that included pressureless sintering in air, so use
`of that process is not surprising. Id. at 24. Finally, Petitioner argues that
`Patent Owner has failed to establish a nexus to the claims, because the
`claimed hardness values are not necessarily a product of pressureless
`sintering in air. Id. at 24–25.
`As our reviewing court has explained, “any superior property must be
`unexpected to be considered as evidence of non-obviousness.” Pfizer, Inc. v.
`Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007). All types of objective
`evidence of nonobviousness must be shown to have nexus. In re Kao, 639
`F.3d 1057, 1069 (Fed. Cir. 2011). The claims of the subject patent must be
`shown to be commensurate in scope with the asserted showing of
`unexpected results advanced by Patent Owner. See In re Grasselli, 713 F.2d
`731, 743 (Fed. Cir. 1983); In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir.
`2003) (“the applicant’s showing of unexpected results must be
`commensurate in scope with the claimed range”); In re Clemens, 622 F.2d
`1029, 1035 (CCPA 1980) (“In order to establish unexpected results for a
`claimed invention, objective evidence of non-obviousness must be
`commensurate in scope with the claims which the evidence is offered to
`support.”).
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`Regarding hardness and grain size, Dr. Lilley states that improving
`hardness at grain sizes below 3–4 µm was unexpected at the time of the ’584
`patent. Ex. 2114 ¶ 103. Dr. Clarke, however, states that these properties
`would not have been surprising to one of ordinary skill in the art in 1994 or
`1995, given the properties of Igarashi’s material in 1991. Ex. 1115 ¶ 30.
`Patent Owner directs us to the specification’s statements regarding
`extraordinary surprise and unexpectedly superior properties; we agree with
`Petitioner, however, that in view of the evidence of record, those statements
`are subjective. Reply 24. Weighing the evidence presented, we are not
`persuaded that the improved hardness, strength, grain size, and relative
`density were unexpected.
`Regarding pressureless sintering in air, Patent Owner does not direct
`us to evidence in the record explaining with specificity what processes were
`used to obtain the materials of claims 14 and 26–29, such that we may
`determine whether the challenged claims are made by the processes that
`Patent Owner alleges give rise to unexpected results. As Petitioner points
`out, the claims do not require pressureless sintering in air. Reply 24. Patent
`Owner’s assertion that the Vickers hardnesses of the challenged claims “line
`up with the unexpected results that the inventors achieved by performing
`pressureless sintering in air” does not demonstrate a nexus between the
`claims and the asserted unexpected results. PO Resp. 32–33.
`Accordingly, on the current record, Patent Owner has not established
`that the challenged claims of the ’584 patent are commensurate in scope
`with the asserted showing of unexpected results advanced by Patent Owner.
`We are persuaded by Petitioner’s argument that Patent Owner failed to show
`unexpected results. Reply 23–25. Accordingly, we do not find that the
`
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`proffered evidence of unexpected results supports Patent Owner’s argument
`of nonobviousness.
`iv.
`Testimony of Dr. Clarke
`Patent Owner argues that the Board should not credit Dr. Clarke’s
`testimony, because Petitioner’s counsel did not properly instruct him on
`several key points of the law of obviousness. PO Resp. 33.
`Regarding the testimony of Dr. Clarke, we can accord appropriate
`weight to an expert’s testimony, taking into account the expert’s
`understanding of the level of skill in the art at the time of the invention. See,
`e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the
`Board has discretion to give more weight to one item of evidence over
`another “unless no reasonable trier of fact could have done so”); In re Am.
`Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board
`is entitled to weigh the declarations and conclude that the lack of factual
`corroboration warrants discounting the opinions expressed in the
`declarations.”). We are not persuaded that Dr. Clarke’s testimony should be
`given no weight due to Petitioner’s counsel’s alleged failure to instruct him
`on the law of obviousness. We accord the appropriate weight to Dr.
`Clarke’s testimony as indicated in this Decision and for the reasons
`articulated in this Decision.
`C.
`Conclusion
`For the foregoing reasons, after considering the Petition, Patent
`Owner Response, Reply, and the evidence relied upon by Petitioner and
`Patent Owner, including evidence of secondary considerations, we are
`persuaded that Petitioner has shown by a preponderance of the evidence that
`claims 14 and 26–29 would have been obvious over Igarashi.
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`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that claims 14 and 26–29 of the ’584 patent are held
`unpatentable; and
`FURTHER ORDERED that because this is a final written decision,
`parties to the proceeding