Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 16
`Entered: August 17, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICRON TECHNOLOGY, INC.,
`Petitioner,
`
`v.
`
`PRESIDENT AND FELLOWS OF HARVARD COLLEGE,
`Patent Owner.
`
`Case IPR2017-00662
`Patent 6,969,539 B2
`
`Before CHRISTOPHER L. CRUMBLEY, JON B. TORNQUIST, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`DECISION
`Denial of Request for Rehearing
`37 C.F.R. § 42.71(d)
`
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`Tel: 571-272-7822
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`Paper 16
`Entered: August 17, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICRON TECHNOLOGY, INC.,
`Petitioner,
`
`v.
`
`PRESIDENT AND FELLOWS OF HARVARD COLLEGE,
`Patent Owner.
`
`Case IPR2017-00662
`Patent 6,969,539 B2
`
`Before CHRISTOPHER L. CRUMBLEY, JON B. TORNQUIST, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`DECISION
`Denial of Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
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`IPR2017-00662
`Patent 6,969,539 B2
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`INTRODUCTION
`Micron Technology, Inc. (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) requesting inter partes review of claims 24, 26, and 29 of U.S. Patent
`No. 6,969,539 B2 (Ex. 1001, “the ’539 patent”). The President and Fellows
`of Harvard College (“Patent Owner”) filed a Preliminary Response (Paper 8,
`“Prelim. Resp.”). After considering the Petition, the Preliminary Response,
`and the evidence of record, we determined that Petitioner had demonstrated
`that there was a reasonable likelihood that it would prevail with respect to at
`least one of the claims challenged in the Petition. Paper 11, 19.
`Accordingly, we instituted inter partes review to determine whether claims
`24, 26, and 29 of the ’539 patent are unpatentable either as anticipated by
`Buchanan1 or as obvious over the combination of Buchanan and the
`knowledge of a person of ordinary skill in the art. Id. at 19–20. Patent
`Owner now requests that we rehear our decision to institute inter partes
`review. Paper 14 (“Request”).
`We will grant a request for rehearing of a petition decision if the
`requesting party demonstrates “an abuse of discretion” in the decision.
`37 C.F.R. § 42.71(c). That party must also “specifically identify . . . the
`place where each matter [that we misapprehended or overlooked] was
`previously addressed.” Id. § 42.71(d). After considering Patent Owner’s
`request for rehearing, our decision, and the evidence currently of record, we
`determine Patent Owner has not demonstrated an abuse of discretion.
`Accordingly, we deny the request for rehearing.
`
`
`1 Buchanan et al., U.S. Patent No. 6,984,591 B1, issued Jan. 10, 2006
`(Ex. 1005, “Buchanan”).
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`2
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`ANALYSIS
`A. Anticipation by Buchanan
`Patent Owner argues that we abused our discretion by instituting
`review with respect to the asserted anticipation of claims 24, 26, and 29 by
`Buchanan. Request 4–11. Specifically, Patent Owner argues first that we
`“misinterpreted Buchanan’s disclosure” and second that we were incorrect in
`relying on In re Petering, 301 F.2d 676 (CCPA 1962), to determine that
`Petitioner had made a sufficient showing to demonstrate a reasonably
`likelihood of succeeding in showing that Buchanan anticipates claims 24,
`26, and 29. In addition, Patent Owner argues that it was error to rely on the
`testimony of Petitioner’s declarant, Dr. Banerjee.
`
`1. Disclosure of Buchanan
`Buchanan makes several disclosures relevant to the claims Petitioner
`challenges in this proceeding. First, Buchanan discloses an “inventive
`method” for depositing a metal, metal oxide, or metal nitride film on a
`substrate using atomic layer deposition. Ex. 1005, 19:60–21:2. This method
`alternately exposes a heated substrate to a “precursor source mixture” and a
`“reactant.” Id. at 20:7–49. The reactant is chosen depending on whether a
`metal, metal oxide, or metal nitride film is to be deposited, and “[t]he
`preferred [reactant for an oxide film] is water.” Id. at 20:16–20. In the
`specific example of Buchanan, two precursor source mixtures—zirconium
`nitrate in pentane and hafnium tertbutoxide in pentane—are used, resulting
`in a film that is a mixture of zirconium and hafnium, or zirconium oxide and
`hafnium oxide, or zirconium nitride and hafnium nitride, depending on the
`particular reactant chosen. Id. at 20:1–11. Second, Buchanan discloses that
`its “inventive method . . . can be expanded to include growth of any single
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`component metal, metal oxide, metal nitride or metal silicide film deposited
`by atomic layer deposition utilizing one precursor source mixture which
`contains only one precursor.” Id. at 20:63–67.
`Third, Buchanan discloses a class of precursor source mixtures, each
`comprising “at least one precursor” and “an inert liquid.” Id. at 5:18–21.
`The “precursor” of Buchanan
`is defined as any compound which contains an element selected
`from the group consisting of Li, Na, K, Rb, Cs, Fr, Be, Mg, Ti,
`Zr, Hf, Sc, Y, La, V, Nb, Ta, Cr, Mo, W, Mn, Re, Fe, Ru, Os,
`Co, Rh, Ir, Ni, Pd, Pt, Cu, Ag, Au, Zn, Cd, Hg, B, Al, Ga, In,
`Tl, Si, Ge, Sn, Pb, As, P, Sb and Bi, to which is bound at least
`one ligand selected from the group consisting of hydride (H),
`alkyl (CR3), alkenyl (CRCR2), cycloalkenyl, aryl, alkyne
`(CCR), carbonyl (CO), amido (NR2), imido (NR), hydrazido
`(NRNR2), phosphido (PR2), nitrosyl (NO), nitryl (NO2), nitrate
`(NO3), nitrile (RCN), isonitrile (RNC), halide (F, Cl, Br, or I),
`azide (N3), alkoxy (OR), siloxy (OSiR3) silyl (SiR3), and
`halogenated, sulfonated or silyated derivatives thereof and
`when delivered to a vaporizer the precursor is readily converted
`into gaseous form.
`Id. at 5:22–37. The “inert liquid” of Buchanan “is defined as any liquid
`which does not decompose when in contact with the precursor of the present
`invention during storage and during vaporization of the precursor.” Id. at
`7:4–7. “The precursor source mixture of [Buchanan] can be used in any
`CVD or ALD process with any delivery means currently employed.” Id. at
`7:30–32.
`Fourth, Buchanan discloses a subclass of precursors that are
`“preferred.” Id. at 5:66–7:3. These “preferred” precursors include
`“tetrakis(dimethylamino), [and] tetrakis(diethylamino) Ti, Zr, Hf, Si, Ge, Sn,
`or Pb.” Id. at 5:67–6:1, 6:45–47. In addition, “tetrakis(dimethylamino),
`[and] tetrakis(diethylamino) Ti, Zr, Hf, Si, Ge, Sn, or Pb” are described,
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`when “dissolved, emulsified or suspended in a C5–C12 alkane liquid with
`additional amine,” as “[h]ighly preferred precursor source mixtures
`comprised of at least one amino-containing precursor.” Id. at 14:55–58,
`15:1–2.
`Fifth, Buchanan discloses that certain types of precursors used in
`prior-art chemical vapor deposition and atomic layer deposition processes
`suffer from particular disadvantages. Id. at 1:28–3:47. In particular,
`Buchanan discloses that “alkoxides . . . are known to change their chemical
`state by ligand rearrangement, hydrolysis, [oligomerization], ring formation,
`cluster formation, and/or oxidation over time” and “are particularly sensitive
`to water and oxygen impurities which may be inadvertently introduced.” Id.
`at 2:23–35. In addition, Buchanan discloses that “[a]lkoxides . . . may exist
`in a number of isomeric forms which interconvert over time resulting in a
`variable vapor pressure.” Id. at 2:36–44. Buchanan also discloses that
`“amides . . . behave similarly to alkoxides, being prone to” the same
`disadvantages disclosed for those compounds. Id. at 2:45–49. Finally,
`Buchanan discloses that “anhydrous metal nitrates such as titanium nitrate,
`zirconium nitrate and gallium nitrate . . . are air and water sensitive and are
`known to decompose at temperatures around 100° C.” Id. at 2:49–53.
`
`2. Asserted Misinterpretation of Buchanan’s Disclosure
`Patent Owner argues that we misinterpreted Buchanan’s disclosure as
`sufficient to show a reasonable likelihood of anticipation of claim 24 (and its
`dependent claims 26 and 29). Request 4–7. In particular, Patent Owner
`argues that Buchanan should not be interpreted as “disclos[ing] a list of
`precursors that can be used in Example 3 to grow a metal oxide film
`deposited by atomic layer deposition.” Id. at 5.
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`At issue is the statement in Buchanan’s Example 3 that its “inventive
`method . . . can be expanded to include growth of any single component
`metal, metal oxide, metal nitride or metal silicide film deposited by atomic
`layer deposition utilizing one precursor source mixture which contains only
`one precursor.” Ex. 1005, 20:63–67. This statement follows an example in
`which two precursor source mixtures, one containing the precursor
`zirconium nitrate and the other containing the precursor hafnium
`tertbutoxide, are used to deposit a metal, metal oxide, or metal nitride film.
`Id. at 19:60–20:49. Patent Owner argues that this statement should be
`interpreted only as expanding the disclosure of Example 3 beyond the use of
`a combination of zirconium nitrate and hafnium tertbutoxide to the use of
`either of these precursors individually, as opposed to expanding the
`disclosure of Example 3 to the use of any suitable precursor disclosed by
`Buchanan. Request 5–6.
`We are not persuaded that, based on the current record, we have
`misinterpreted Buchanan’s disclosure. First, Buchanan’s Example 3 does
`not state, as Patent Owner argues, “that the inventive method can be
`expanded from forming a multicomponent metal oxide as specifically
`described in Example 3, to forming a single metal oxide by ‘utilizing one
`precursor source mixture which contains only one precursor.’” Request 5.
`Patent Owner leaves out a portion of the statement, which says that the
`method “can be expanded to include growth of any single component metal,
`metal oxide, metal nitride or metal silicide film.” Ex. 1005, 20:63–67
`(emphasis added). If the statement were to be limited to the use of one of
`the two precursors discussed in Example 3, it would mean that the method
`could be expanded only to deposit films containing either zirconium or
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`hafnium, not to films based on “any . . . metal.” It may be that the evidence
`adduced at trial will show that “any . . . metal” should be interpreted as
`limited to zirconium and hafnium, but it is not apparent from the present
`record why this should be the case. If our conclusion on this record that
`Example 3 can be expanded to include the deposition of films based on any
`metal is correct, however, then it follows that the use of precursors other
`than zirconium nitrate and hafnium tertbutoxide is contemplated.
`Second, the statement that the “inventive method . . . can be expanded
`to include growth of any single component metal, metal oxide, metal nitride
`or metal silicide film deposited by atomic layer deposition utilizing one
`precursor source mixture which contains only one precursor” does not stand
`alone. It is accompanied by the disclosure elsewhere in Buchanan that
`Buchanan’s disclosed precursor source mixtures “can be used in any CVD or
`ALD process.” Ex. 1005, 7:30–31. It may be that the evidence adduced at
`trial will show that this statement should not be interpreted as applying to
`every one of Buchanan’s disclosed precursors, or even to all the precursors
`that Buchanan describes as “preferred” or “highly preferred.” In addition, of
`course, we will not decide whether either the statement about expanding
`Example 3 or the statement about using Buchanan’s precursors in any CVD
`or ALD process, standing alone, would be sufficient to show that a person of
`ordinary skill in the art would have understood Buchanan as disclosing the
`use of “tetrakis(dimethylamino), [and] tetrakis(diethylamino) Ti, Zr, Hf, Si,
`Ge, Sn, or Pb” in the method of Example 3. It may yet prove to be the case
`that even the combination of these two statements is insufficient. But, for
`the reasons given in our Institution Decision, on the evidence of record at
`this time, we are persuaded that the combination of these statements,
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`together with the disclosure of “tetrakis(dimethylamino), [and]
`tetrakis(diethylamino) Ti, Zr, Hf, Si, Ge, Sn, or Pb” as “preferred” and
`“[h]ighly preferred” and the disclosure of Example 3, is sufficient to
`demonstrate a reasonable likelihood that Petitioner will succeed in showing
`that Buchanan anticipates claims 24, 26, and 29 of the ’539 patent.
`Next, Patent Owner argues that Buchanan’s disclosure would not lead
`a person of ordinary skill in the art to use “tetrakis(dimethylamino), [and]
`tetrakis(diethylamino) Ti, Zr, Hf, Si, Ge, Sn, or Pb” in the method of
`Example 3, despite Buchanan’s disclosure that these are preferred precursor
`choices. Request 9–10. Patent Owner argues that this is because
`“Buchanan’s ‘preferred precursors’ are identified only because they are
`readily vaporized” and because Buchanan discloses that these particular
`compounds have “suboptimal chemical characteristics.” Id. On the first
`point, it does not matter why Buchanan describes these compounds as
`preferred, only that it does so, along with the disclosure that any of the
`precursors can be used in any ALD process and the disclosure that any
`suitable precursor can be used in the expanded disclosure of Example 3. As
`to the second point, it is true that Buchanan notes that amides are “prone to
`ligand rearrangement, hydrolysis, oxidation, [oligomerization], ring
`formation and existing in several interconvertable isomeric forms resulting
`in irreproducible vapor pressures over time.” Ex. 1005, 2:46–49. Patent
`Owner argues that, given this disclosure, a person of ordinary skill in the art
`would not have chosen amide compounds over the other compounds
`disclosed in Buchanan. Request 9–10. But Buchanan also notes that
`alkoxides have precisely the same disadvantages as amides and that
`anhydrous metal nitrates “are air and water sensitive and are known to
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`decompose at temperatures around 100° C.” Ex. 1005, 2:23–46, 2:49–53.
`And Buchanan clearly does not discourage the use of either alkoxides or
`metal nitrates, given that Example 3 discloses using hafnium tertbutoxide, an
`alkoxide, and zirconium nitrate, a metal nitrate. Id. at 20:7–11. Thus, the
`mere fact that Buchanan discloses that there are disadvantages associated
`with the use of a particular precursor does not lead us to conclude, on this
`record, that Buchanan is intended to dissuade the person of ordinary skill in
`the art from using that precursor.
`
`3. Asserted Misapplication of In re Petering
`Patent Owner argues that our reliance on In re Petering in our
`Institution Decision was misplaced. Request 7–11 (citing Paper 11, 9–10).
`We noted, based on Petering, that “[e]ven if Buchanan’s voluminous list of
`specifically named compounds could be treated as a disclosure of a genus
`without any corresponding disclosure of how to select appropriate species
`from within that genus, Buchanan would still anticipate claim 24 if a person
`of ordinary skill in the art would ‘at once envisage’ a specific compound
`within the scope of claim.” Paper 11, 9 (citing Petering, 301 F.2d at 681).
`We also noted that, “in determining whether a person of ordinary skill in the
`art would at once envisage a particular compound, we look to the disclosure
`of preferred compounds within a reference’s generic disclosure.” Id. at 9–
`10.
`
`Patent Owner argues that Petering is inapposite because it relates to
`the anticipation of claims to particular compositions rather than to the type
`of method claims challenged in this proceeding. Request 8. But Patent
`Owner does not challenge our conclusion that, apart from the particular
`amide compounds recited in the challenged claims, Buchanan discloses the
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`method claimed in the ’539 patent. As we stated in our Institution Decision,
`Paper 11, 7–8, the only question is whether Buchanan sufficiently discloses
`the use of the recited compounds in that method. The application of
`Petering to determine whether these compounds are disclosed in Buchanan
`thus is appropriate. As discussed above, we are persuaded that, even in the
`absence of reliance on Petering, Petitioner has shown sufficiently for
`purposes of instituting review that, at least on the present record, Buchanan
`discloses using any of its suitable precursors in the method of its Example 3.
`Given this disclosure, we are not persuaded by Patent Owner’s argument
`that Petitioner’s anticipation ground fails because “Buchanan . . . does not
`disclose that [the preferred amides] are ‘highly preferred’ for forming metal
`oxides.” Request 8–9 (emphasis in original).
`Patent Owner also argues that it is error to apply Petering in such a
`way as to “mechanistic[ally] dissect[] and recombin[e] the components of
`the specific illustrative compounds . . . to create hindsight anticipations with
`the guidance of an applicant’s disclosures.” Id. at 9 (quoting In re Ruschig,
`343 F.2d 965, 974 (CCPA 1965)). This properly states the law, but this is
`neither what Petitioner asks us to do nor what we did in our Institution
`Decision. The specific error the Ruschig court warned us not to commit is
`mixing and matching the constituent parts of separate named chemical
`compounds to create new chemical compounds that fall within the scope of a
`challenged claim. Ruschig, 343 F.2d at 974. Here, though, at least on the
`present record, Buchanan expressly discloses the use of compounds that are
`the “metal amides having an amido group selected from the group consisting
`of dialkylamido, disilylamido and (alkyl)(silyl) amido moieties” of claim 24.
`Ex. 1005, 5:57–6:1, 6:45–47 (“the preferred precursors are . . . tetrakis
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`(dimethylamino), [and] tetrakis(diethylamino) Ti, Zr, Hf, Si, Ge, Sn, or Pb”);
`see id. at 7:30–31 (“The precursor source mixture of the present invention
`can be used in any CVD or ALD process . . .”), 20:63–67 (“The inventive
`method . . . can be expanded to include growth of any single component . . .
`metal oxide . . . film deposited by atomic layer deposition utilizing . . . only
`one precursor.”). No “mechanistic dissection and recombination of the
`components of the specific illustrative compounds” is required to arrive at
`the use of “the specific illustrative compounds” themselves. Ruschig, 343
`F.2d at 974.
`
`4. Dr. Banerjee’s Testimony
`In our discussion of Petering, we noted that Petitioner’s declarant, Dr.
`Banerjee, testified “that a person of ordinary skill ‘would have at once
`envisaged’ the use of Buchanan’s named precursors in Buchanan’s Example
`3.” Paper 11, 9 (quoting Ex. 1003 ¶ 134). Although we noted that this
`testimony was disputed by Patent Owner’s declarant, Dr. Gladfelter, we
`were required to resolve the factual dispute in the light most favorable to
`Petitioner for purposes of the Institution Decision. Id. (citing 37 C.F.R.
`§ 42.108(c); Ex. 2101 ¶ 127). Patent Owner now argues that Dr. Banerjee’s
`testimony is entitled to no weight because it “is in the form of conclusory
`statements and fails to adequately explain why one of ordinary skill ‘would
`have at once envisaged’ the use of Buchanan’s named precursors in Example
`3.” Request 10–11. Patent Owner cites to page 21 of its Preliminary
`Response as the place where it raised this argument previously. Id. at 10.
`Patent Owner did not previously raise the argument that Dr. Banerjee’s
`testimony is entitled to no weight, either on page 21, or on any other page, of
`its Preliminary Response. Under our rules, a party requesting rehearing
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`must “specifically identify . . . the place where each matter [that we
`misapprehended or overlooked] was previously addressed.” 37 C.F.R.
`§ 42.71(d). Accordingly, we will not grant Patent Owner’s request for
`rehearing on this basis.
`Moreover, we note that Dr. Banerjee’s testimony cites to Buchanan’s
`statement that “[t]he precursor source mixture of the present invention can
`be used in any CVD or ALD process with any delivery means currently
`employed” as the reason that a person of ordinary skill in the art “would
`have at once envisaged that the other precursors are applicable to Example
`3.” Ex. 1003 ¶ 134 (quoting Ex. 1005, 7:30–34). We need not determine at
`this point whether this reasoning is sufficient, in light of Dr. Gladfelter’s
`testimony to the contrary, to establish as a factual matter that a person of
`ordinary skill in the art actually “would have at once envisaged that the other
`precursors are applicable to Example 3,” which is an issue to be determined
`at trial. We do note, however, that, contrary to Patent Owner’s argument,
`Dr. Banerjee does offer at least some explanation for his opinion.
`
`B. Obviousness over Buchanan
`Patent Owner argues that we abused our discretion by instituting
`review with respect to the asserted obviousness of claims 24, 26, and 29 over
`the combination of Buchanan and the knowledge of a person of ordinary
`skill in the art. Request 11–15. Specifically, Patent Owner argues that we
`misconstrued Petitioner’s arguments, that we misunderstood Buchanan’s
`disclosure as supporting Petitioner’s obviousness arguments, and that we
`improperly excused Petitioner’s lack of proof as to a reason to combine
`Buchanan’s disclosures.
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`1. Asserted Misconstruction of Petitioner’s Arguments
`First, Patent Owner argues that we “misconstrued Petitioner’s
`argument” when we stated that “Petitioner argues that Buchanan itself
`teaches that zirconium nitrate and hafnium tertbutoxide ‘hav[e] suboptimal
`thermal stability and air sensitivity characteristics’ not possessed by the
`metal dialkylamides.” Request 11–12 (quoting Paper 11, 11). Patent Owner
`is correct that Petitioner did not argue that the suboptimal chemical
`characteristics of zirconium nitrate and hafnium tertbutoxide are not
`possessed by metal dialkylamides. Pet. 35. We are not persuaded, however,
`that our characterization of Petitioner’s argument amounts to an abuse of
`discretion in our instituting inter partes review on the ground of the asserted
`obviousness of claims 24, 26, and 29 over Buchanan, because we did not
`rely on this characterization of Petitioner’s argument in instituting review.
`Paper 11, 14 (“On the present record, and particularly in light of Buchanan’s
`teachings that Buchanan’s disclosed precursors, including [the metal
`dialkylamides], are suitable for use in all ALD processes, we are persuaded
`that Petitioner has demonstrated a reasonable likelihood of succeeding in
`showing the obviousness of the challenged claims over the combination of
`Buchanan and the knowledge of a person of ordinary skill in the art.”).
`
`2. Asserted Misunderstanding of Buchanan’s Disclosure
`Next, Patent Owner argues that it was improper for us to rely on
`Buchanan’s designation of the metal dialkylamides as “[h]ighly preferred,”
`because “Buchanan describes [those compounds] as ‘[h]ighly preferred’
`only among ‘amino-containing precursor[s].’” Request 12–13 (quoting
`Paper 11, 13). As discussed above, however, our Institution Decision rests
`on the full disclosure of Buchanan, including not only the description of
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`metal dialkylamides as “[h]ighly preferred” among “amino-containing
`precursor[s],” Ex. 1005, 14:55–57, but also Buchanan’s description of metal
`dialkylamides as “preferred precursors,” id. at 5:67–6:1, 6:45–47,
`Buchanan’s disclosure that its precursors “can be used in any CVD or ALD
`process,” id. at 7:30–31, and Buchanan’s disclosure that the method of
`Example 3 “can be expanded to include growth of any single component . . .
`metal oxide . . . film deposited by atomic layer deposition utilizing . . . one
`precursor,” id. at 20:63–67. Accordingly, we are not persuaded by Patent
`Owner’s argument that Buchanan’s description of metal dialkylamides as
`“[h]ighly preferred” would be insufficient on its own to support the
`institution of inter partes review on the ground of obviousness.
`The same is true of Patent Owner’s argument that “Buchanan does not
`disclose [metal dialkylamides] as ‘highly preferred’ for forming metal
`oxides via the process in Example 3.” Request 13. It may turn out at trial
`that Petitioner’s proof of obviousness is insufficient, but, based on the full
`disclosure of Buchanan, we remain persuaded that, on the present record,
`Petitioner has shown sufficiently for the purpose of instituting review that a
`person of ordinary skill in the art would have found it obvious to combine
`Buchanan’s disclosure of an ALD process in Example 3 with Buchanan’s
`disclosure that the “preferred” precursors “tetrakis(dimethylamino), [and]
`tetrakis(diethylamino) Ti, Zr, Hf, Si, Ge, Sn, or Pb” can be used in any ALD
`process.
`
`3. Asserted Excuse of Petitioner’s Proof
`Finally, Patent Owner argues that we abused our discretion by
`“excus[ing] the lack of any proffered evidence by Petitioner as to why
`tetrakis(dimethylamino) zirconium, tetrakis(diethylamino) zirconium,
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`tetrakis(dimethylamino) hafnium, and tetrakis(diethylamino) hafnium in
`particular would have been selected as better in Buchanan’s Example 3 than
`any of the other compounds disclosed by Buchanan.” Request 13–15. As
`discussed above, we are persuaded that Petitioner has shown sufficiently for
`purposes of instituting review that, at least on the present record, Buchanan
`discloses using any of its suitable precursors in the method of its Example 3.
`Given this, Petitioner was not required to show that these particular
`compounds “would have been selected as better . . . than any of the other
`compounds disclosed by Buchanan” in order for us to conclude that
`Petitioner had shown a reasonable likelihood of succeeding in demonstrating
`the obviousness of claims 24, 26, and 29 over the combination of Buchanan
`and the knowledge of a person of ordinary skill in the art. The law does not
`require that the use of the claimed compound be “better . . . than [the use of]
`any of the other disclosed compounds,” because “[a] finding that the prior
`art as a whole suggests the desirability of a particular combination need not
`be supported by a finding that the prior art suggests that the combination
`claimed . . . is the preferred, or most desirable, combination.” Bayer
`Healthcare Pharms., Inc. v. Watson Pharms., Inc., 713 F.3d 1369, 1376
`(Fed. Cir. 2013) (quoting In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir.
`2004)). Instead, it requires only that the person of ordinary skill in the art
`would have had a reason to combine the teachings of the prior art. Here, to
`support its obviousness ground, Petitioner will need to show at trial that a
`person of ordinary skill in the art would have had a reason to combine
`Buchanan’s teaching in Example 3 of a particular ALD process with
`Buchanan’s teaching that “tetrakis(dimethylamino), [and] tetrakis
`(diethylamino) Ti, Zr, Hf, Si, Ge, Sn, or Pb” were suitable precursors for use
`
`15
`
`
`
`IPR2017-00662
`Patent 6,969,539 B2
`
`in an ALD process. In our Institution Decision, we were persuaded that,
`given Buchanan’s disclosure of using any suitable precursor in the process
`of Example 3, Buchanan’s disclosure that any of its precursors were suitable
`for use in any ALD process, and the description of these particular
`precursors as “preferred” and “highly preferred,” Petitioner had
`demonstrated a reasonable likelihood that it would succeed in making this
`showing at trial. We are not persuaded by Patent Owner’s argument that we
`abused our discretion in coming to this conclusion.
`
`CONCLUSION
`Upon consideration of the Request for Rehearing, our Institution
`Decision, the Petition, the Preliminary Response, and the evidence before us,
`we determine that Patent Owner has not demonstrated that we abused our
`discretion in instituting inter partes review on either the ground of asserted
`anticipation by Buchanan or the ground of asserted obviousness over the
`combination of Buchanan and the knowledge of a person of ordinary skill in
`the art.
`
`
`ORDER
`
`It is hereby
`ORDERED that the request for rehearing is denied.
`
`
`
`
`
`
`16
`
`
`
`IPR2017-00662
`Patent 6,969,539 B2
`
`PETITIONER:
`Jeremy Jason Lang
`WEIL, GOTSHAL & MANAGES LLP
`jason.lang@weil.com
`
`
`PATENT OWNER:
`Reza Mollaaghababa
`Thomas Engellenner
`Andrew Schultz
`PEPPER HAMILTON LLP
`mollaaghababar@pepperlaw.com
`engellennert@pepperlaw.com
`schultza@pepperlaw.com
`
`
`
`
`
`
`
`
`
`17
`
`
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