throbber
Trials@uspto.gov
`571-272-7822
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` Paper No. 7
`Entered: October 31, 2017
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SPTS TECHNOLOGIES LTD.,
`Petitioner,
`
`v.
`
`PLASMA-THERM LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01314
`Patent 8,980,764 B2
`____________
`
`
`
`Before WILLIAM V. SAINDON, ELIZABETH M. ROESEL, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`ROESEL, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`

`

`IPR2017-01314
`Patent 8,980,764 B2
`
`
`This case concerns U.S. Patent No. 8,980,764 B2 (Ex. 1001, “the
`
`’764 patent”). SPTS Technologies Limited (“Petitioner”) filed a Petition
`
`seeking inter partes review of claims 1–5 of the ’764 patent (Paper 2,
`
`“Pet.”). Plasma-Therm LLC (“Patent Owner”) filed a Preliminary
`
`Response. Paper 6 (“Prelim. Resp.”).
`
`We have authority to determine whether to institute an inter partes
`
`review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). An inter partes review may
`
`be authorized only if the information presented in the Petition and the
`
`Preliminary Response shows that there is a reasonable likelihood that
`
`Petitioner would prevail with respect to at least one claim challenged in the
`
`Petition. 35 U.S.C. § 314(a).
`
`Petitioner challenges claims 1–5 of the ’764 patent as unpatentable
`
`under 35 U.S.C. § 103. Pet. 6. Based on the arguments and evidence
`
`presented in the Petition and Preliminary Response, we determine that
`
`Petitioner has not established a reasonable likelihood that it would prevail
`
`with respect to at least one of the claims challenged in the Petition.
`
`Therefore, institution of an inter partes review is denied.
`
`I. BACKGROUND
`
`A. Related Matters
`
`The parties identify no related litigation matters pursuant to 37 C.F.R.
`
`§ 42.8(b)(2). Pet. 4; Paper 5, 1 (Patent Owner’s Mandatory Notices).
`
`In IPR2017-01457, also pending before the Board, Petitioner
`
`challenges claims 1, 3, and 4 of U.S. Patent No. 9,202,720 B2 (“the ’720
`
`patent”). The ’764 patent and the ‘720 patent claim priority to the same U.S.
`
`Application No. 13/412,119, filed March 5, 2012, and to the same U.S.
`
`Provisional Application No. 61/452,450, filed March 14, 2011.
`
`2
`
`

`

`IPR2017-01314
`Patent 8,980,764 B2
`
`
`B. Petitioner’s Asserted Ground of Unpatentability
`
`Petitioner asserts that claims 1–5 of the ’764 patent are unpatentable
`
`under 35 U.S.C. § 103 as obvious over the following references:
`
`Reference U.S. Patent/Pub. No.
`
`Issue/Pub. Date
`
`Exhibit
`
`Sekiya
`
`2004/0115901 A1
`
`June 17, 2004
`
`Todorow
`
`2006/0000805 A1
`
`Jan. 5, 2006
`
`Nisany
`
`2009/0183583 A1
`
`July 23, 2009
`
`Ogasawara
`
`7,411,384 B2
`
`Aug. 12, 2008
`
`1005
`
`1006
`
`1007
`
`1008
`
`
`
`Pet. 6. Petitioner supports its challenge with a Declaration of Dr. John E.
`
`Spencer. Ex. 1009. Patent Owner supports its Preliminary Response with a
`
`Declaration of Stanley Shanfield, Ph.D. Ex. 2001.
`
`C. The ’764 Patent (Ex. 1001)
`
`The ’764 patent issued March 17, 2015 from U.S. Application No.
`
`13/764,160, filed February 11, 2013. Ex. 1001, (21), (22).
`
`The ’764 patent discloses a method for plasma dicing a semiconductor
`
`wafer. Id. (54). Dicing is a process by which individual semiconductor
`
`devices (die or chips) are separated from each other after they have been
`
`fabricated on a substrate, such as a silicon wafer. Id. at 1:25–26, 2:16–18.
`
`Dicing can be carried out by mechanical means, such as breaking along
`
`scribe lines or sawing, or by plasma etching. Id. at 2:18–25, 2:49–51.
`
`According to the ’764 patent, plasma dicing has a number of benefits over
`
`mechanical dicing, but current plasma etching equipment is not suitable for
`
`processing substrates that are “fixtured for dicing.” Id. at 2:59–67, 3:5–21.
`
`The ’764 patent aims to provide a plasma etching method that is “compatible
`
`3
`
`

`

`IPR2017-01314
`Patent 8,980,764 B2
`
`with the established wafer dicing technique of handling a substrate mounted
`
`on tape and supported in a frame . . . .” Id. at 3:47–52.
`
`A substrate mounted on tape and supported in a frame is shown in
`
`Figure 3, which is reproduced below:
`
`
`
`Figure 3 of the ’764 patent is a cross-sectional view of work piece 1A (also
`
`referred to substrate/tape/frame assembly 1A), including substrate 1 adhered
`
`to tape 5, which is mounted in rigid frame 6. Ex. 1001, 9:33–35. Substrate
`
`1 has device structures 2 separated by street areas 3. Id. at 8:57–61; see also
`
`Fig. 1 (showing top down view of substrate with device structures separated
`
`by streets). Device structures 2 are covered with protective material 4, such
`
`as a photoresist, while street areas 3 remain unprotected. Id. at 9:1–5.
`
`A processing chamber for carrying out a plasma dicing method is
`
`shown in Figure 6, which is reproduced below:
`
`4
`
`

`

`IPR2017-01314
`Patent 8,980,764 B2
`
`
`
`
`Figure 6 of the ’764 patent shows vacuum processing chamber 10 equipped
`
`with gas inlet 11, high density plasma source 12, work piece support 13, RF
`
`power source 14, vacuum pump 15, Electrostatic Chuck (“ESC”) 16, lifting
`
`mechanism 17, cover ring 20 with a plurality of holes 21, and conductive
`
`screen 25 with a plurality of holes 26. Ex. 1001, 9:61–10:2, 10:35–37,
`
`11:12–19, 12:29–40. During processing, unprotected street areas 3 of
`
`substrate 1 are etched away using a reactive plasma etch process to separate
`
`devices 2 into individual die. Id. at 10:2–5. Conductive screen 25 may be
`
`made from aluminum or aluminum coated with a plasma resistant coating.
`
`Id. at 12:29–37. Conductive screen 25 reduces ion bombardment from the
`
`plasma on the substrate, while holes 26 allow neutral species from the
`
`plasma to reach the substrate. Id.
`
`5
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`

`

`IPR2017-01314
`Patent 8,980,764 B2
`
`
`According to the ’764 patent, substrate/tape/frame assembly 1A is
`
`transferred into process chamber 10 and placed onto lifting mechanism 17.
`
`Id. at 11:25–28, 12:4–7. To avoid damage to the substrate, lifting
`
`mechanism 17 touches frame 6 area and provides no point contact to
`
`substrate 1. Id. at 12:9–15; see also Fig. 13 (showing wafer/frame in a
`
`transfer position).
`
`D. Illustrative Claim
`
`The ’764 patent includes 5 claims, all of which are challenged in the
`
`Petition. Claim 1 is the sole independent claim and is reproduced below,
`
`with paragraph breaks adjusted and bracketed letters [A] – [I] added to
`
`correspond with Petitioner’s identification of the claim elements:
`
`1. [A] A method for plasma dicing a substrate, the
`method comprising:
`
`[B] providing a process chamber having a wall;
`
`[C] providing a plasma source adjacent to the wall of the
`process chamber, the plasma source generating a plasma in the
`process chamber;
`
`[D] providing a work piece support within the process
`chamber;
`
`[E] providing a lifting mechanism within the work piece
`support;
`
`[F] placing the substrate onto a support film on a frame to
`form a work piece;
`
`[G] placing the work piece onto the work piece support
`using the lifting mechanism,
`
`[H] the lifting mechanism touching a portion of the work
`piece overlapped by the frame;
`
`[I] providing a mechanical partition positioned below the
`plasma source, said mechanical partition positioned above the
`work piece; and etching the work piece through the generated
`
`6
`
`

`

`IPR2017-01314
`Patent 8,980,764 B2
`
`
`plasma from the plasma source with said mechanical partition
`being positioned below the plasma source and said mechanical
`partition being positioned above the work piece.
`
`Ex. 1001, 15:20–16:15; see also Ex. 1001, 27 (certificate of correction).
`
`II. DISCUSSION
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable interpretation in light of the specification of the
`
`patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Tech.,
`
`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under that standard, we
`
`generally give claim terms their ordinary and customary meaning, as
`
`understood by a person of ordinary skill in the art in the context of the entire
`
`patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`
`Cir. 2007).
`
`Petitioner proposes constructions for several claim terms. Pet. 26–28.
`
`Patent Owner contends that no claim term requires construction. Prelim.
`
`Resp. 15.
`
`We determine that no claim term requires express construction for
`
`purposes of this Decision. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`
`F.3d 795, 803 (Fed. Cir. 1999).
`
`B. Level of Ordinary Skill in the Art
`
`Petitioner contends that a person of ordinary skill in the art
`
`(“POSITA”) would have had a Bachelor’s or Master’s degree in electrical
`
`engineering, chemical engineering, physics, chemistry, materials science, or
`
`a similar field, and three to four years of work experience in the
`
`development of plasma etching or chemical vapor deposition or related
`
`7
`
`

`

`IPR2017-01314
`Patent 8,980,764 B2
`
`fields, or alternatively, a PhD in electrical engineering, chemical
`
`engineering, physics, chemistry, materials science, or a similar field. Pet.
`
`25.
`
`Patent Owner contends that a POSITA would have had at least a
`
`Master’s degree in electrical engineering, chemical engineering, materials
`
`science, physics or chemistry, or a similar field, and at least four years of
`
`experience in process development or process engineering related to plasma
`
`etching. Prelim. Resp. 14. Alternatively, this person would have a Ph.D. in
`
`physics, chemistry, electrical engineering, materials science or a similar
`
`field, along with two years of experience with process development or
`
`process engineering related to plasma etching. Id.
`
`The parties’ definitions of a POSITA are similar, except for the two
`
`respects discussed below:
`
`First, Petitioner contends that a POSITA would have had work
`
`experience “in the development of plasma etching or chemical vapor
`
`deposition or related fields” (Pet. 25), whereas Patent Owner contends that a
`
`POSITA’s work experience would have been in “process development or
`
`process engineering related to plasma etching” (Prelim. Resp. 14). Chemical
`
`vapor deposition is not mentioned in the ’764 patent, and Petitioner does not
`
`explain how chemical vapor deposition relates to the subject matter of the
`
`’764 patent. Plasma etching, on the other hand, is precisely the field to
`
`which the ’764 patent relates. See Ex. 1001, 1:18–21. Accordingly, we find
`
`that Patent Owner’s description of a POSITA’s work experience more
`
`closely aligns with the subject matter of the ’764 patent than does
`
`Petitioner’s.
`
`8
`
`

`

`IPR2017-01314
`Patent 8,980,764 B2
`
`
`Second, Patent Owner contends that a POSITA would have had a
`
`higher level of education and a longer period of work experience than does
`
`Petitioner. Compare Pet. 25 (Bachelor’s or Master’s degree and three to
`
`four years of experience or a Ph.D. degree), with Prelim. Resp. 14 (Master’s
`
`degree and four years of experience or a Ph.D. degree and two years of
`
`experience). On the question of obviousness, a higher level of skill in the art
`
`favors Petitioner. Accordingly, Petitioner is not prejudiced if we accept the
`
`level of education and length of work experience as proposed by Patent
`
`Owner.
`
`Accordingly, for purposes determining whether to institute review, we
`
`accept Patent Owner’s definition of a POSITA.
`
`C. Analysis of Petitioner’s Asserted Ground
`
`Petitioner contends that claims 1–5 of the ’764 patent are unpatentable
`
`as obvious in view of Sekiya, Todorow, Nisany, and Ogasawara. Pet. 29–
`
`69. Patent Owner opposes. Prelim. Resp. 29–50.
`
`Our analysis focuses on Sekiya and Todorow and Petitioner’s asserted
`
`rationales for combining the teachings of these references. For purposes of
`
`our analysis, detailed consideration of Nisany and Ogasawara is not
`
`necessary.
`
`1. Sekiya (Ex. 1005)
`
`Sekiya discloses a dicing method. Ex. 1005, (57). More specifically,
`
`Sekiya discloses a dicing method using chemical etching to divide a
`
`semiconductor wafer into individual chips along crosswise streets between
`
`the chips. Id. at [57], ¶ 1.
`
`Sekiya’s disclosed method includes a masking step and an etching
`
`step. Id. ¶ 11. The masking step involves covering the circuit face of the
`
`9
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`

`

`IPR2017-01314
`Patent 8,980,764 B2
`
`semiconductor wafer with tape and selectively removing the tape from the
`
`crosswise streets. Id. ¶¶ 11, 13. The etching step involves chemically
`
`etching the semiconductor wafer in the exposed crosswise streets to divide
`
`the wafer into individual semiconductor chips. Id.
`
`Sekiya discloses placing a semiconductor wafer circuit face up on an
`
`adhesive tape, which traverses the opening of a frame. Id. ¶ 29, Figs. 1, 2
`
`(showing wafer W, tape T, and frame F). Sekiya discloses that the front face
`
`of the wafer is selectively masked, and the wafer is thereafter diced in a dry
`
`etching apparatus. Id. ¶¶ 31–39.
`
`A drying etching apparatus is shown in Sekiya Figure 9, which is
`
`reproduced below:
`
`Figure 9 of Sekiya shows dry-etching apparatus 30, including dry-etching
`
`treatment chamber 33, gas supply 34, semiconductor wafer W on holder 36,
`
`and high-frequency power supply-and-tuner unit 38 connected to upper and
`
`lower electrodes 39. Ex. 1005 ¶¶ 40–46. According to Sekiya, an etching
`
`
`
`10
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`

`

`IPR2017-01314
`Patent 8,980,764 B2
`
`gas is fed into chamber 33 and a high-frequency voltage is applied to
`
`electrodes 39 in order to generate plasma over wafer W, whereby the wafer
`
`is dry-etched. Id. ¶ 46.
`
`2. Todorow (Ex. 1006)
`
`Todorow discloses method and apparatus for etching a substrate using
`
`a spatially modified plasma. Ex. 1006, (57). According to Todorow, the
`
`method includes providing a process chamber having a plasma stabilizer
`
`above a substrate support pedestal. Id.
`
`Todorow’s apparatus is shown in Figure 1, which is reproduced
`
`below:
`
`Figure 1 of Todorow shows etch reactor 100, including process chamber
`
`102, conductive wall 104, dielectric ceiling 108, inductive coil 110, substrate
`
`
`
`11
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`

`

`IPR2017-01314
`Patent 8,980,764 B2
`
`122,1 substrate pedestal 124, lift pins 130, lift mechanism 138, electrostatic
`
`chuck 160, and plasma stabilizer 170. Ex. 1006 ¶¶ 17, 18, 20, 21.
`
`According to Todorow, plasma stabilizer 170 comprises substantially flat
`
`plate 172 having one or more openings (apertures). Id. ¶ 24. Todorow
`
`discloses that plasma stabilizer 170 controls the spatial distribution of
`
`charged and neutral species in chamber 102 such that a dense, stable plasma
`
`is formed above the plasma stabilizer and a plasma with controlled
`
`characteristics is formed between the plasma stabilizer and the substrate. Id.
`
`¶¶ 23, 24.
`
`3. Claim 1
`
`Referring to elements A–I of claim 1 as identified above, Petitioner
`
`contends that Sekiya teaches elements A and F; Todorow teaches elements
`
`B–E, G, and I; and Nisany and Ogasawara each teach element H. Pet. 29–
`
`58. Petitioner notes that Sekiya also teaches claim elements B, C, and D.
`
`Id. at 37. Petitioner offers three rationales for combining the teachings of
`
`the prior art to read on the claim elements: First, Petitioner asserts that the
`
`’764 patent “simply arranges old elements with each performing the same
`
`function it had been known to perform and yields no more than one would
`
`expect from such an arrangement.” Id. at 58. Second, Petitioner asserts that
`
`“[s]ome teaching, suggestion, or motivation in the prior art that would have
`
`led a person having ordinary skill in the art to combine the prior art
`
`reference teachings to arrive at the claimed invention.” Id. at 61. Third,
`
`Petitioner asserts that the combination is the result of “[c]hoosing from a
`
`
`
`1 We agree with Petitioner that substrate 122 appears to be mislabeled “112”
`in Figure 1. Pet. 31.
`
`12
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`

`IPR2017-01314
`Patent 8,980,764 B2
`
`finite number of identified, predictable solutions, with a reasonable
`
`expectation of success, such that the effort was ‘obvious to try.’” Id. at 66.
`
`Patent Owner challenges the sufficiency of Petitioner’s reasons for
`
`combining Sekiya and Todorow. Prelim. Resp. 34–50. Patent Owner argues
`
`that a POSITA would have had no reason to combine the plasma stabilizer
`
`of Todorow with the plasma dicing system of Sekiya because Sekiya does
`
`not suffer from the same plasma instability issues as Todorow. Id. at 36–37.
`
`A patent claim is unpatentable as obvious if the differences between
`
`the subject matter sought to be patented and the prior art are such that the
`
`subject matter as a whole would have been obvious to a person of ordinary
`
`skill in the relevant art at the time the invention was made. 35 U.S.C.
`
`§ 103(a). The legal conclusion of obviousness “cannot be sustained by mere
`
`conclusory statements; instead, there must be some articulated reasoning
`
`with some rational underpinning” for combining elements in the manner
`
`claimed. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting
`
`In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
`
`To satisfy its burden of proving obviousness, a petitioner
`cannot employ mere conclusory statements. The petitioner
`must instead articulate specific reasoning, based on evidence of
`record, to support the legal conclusion of obviousness.
`
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016)
`
`(citing KSR, 550 U.S. at 418). Although the KSR test is flexible, we “must
`
`still be careful not to allow hindsight reconstruction of references . . .
`
`without any explanation as to how or why the references would be combined
`
`to produce the claimed invention.” TriVascular, Inc. v. Samuels, 812 F.3d
`
`1056, 1066 (Fed. Cir. 2016) (citation omitted).
`
`13
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`

`IPR2017-01314
`Patent 8,980,764 B2
`
`
`After considering the Petition and the Preliminary Response under
`
`applicable legal standards, we determine that Petitioner’s arguments and
`
`evidence are not sufficient to show a reasonable likelihood of establishing
`
`obviousness. Although Petitioner advances three obviousness rationales,
`
`only the first and second rationales are relied upon to support the
`
`combination of Sekiya and Todorow. Pet. 58–64. The second and third
`
`rationales are relied upon to support the combination of Nisany or
`
`Ogasawara with Sekiya and Todorow. Id. at 64–69. Petitioner asserts that
`
`claim elements B, C, and D are taught by both Sekiya and Todorow. Id. at
`
`35–37. We determine that neither of Petitioner’s rationales for combining
`
`Sekiya and Todorow is sufficient under applicable legal standards,
`
`regardless of which reference—Sekiya or Todorow—is relied upon to teach
`
`these claim elements.
`
`First, assuming that Todorow is relied upon to teach claim elements
`
`B, C, and D, Petitioner fails to provide a sufficient rationale for combining
`
`Todorow’s process chamber and plasma source with Sekiya’s plasma dicing
`
`method. Petitioner contends that “a POSITA would have been led to carry
`
`out the plasma dicing method of [Sekiya] using the plasma generation
`
`techniques taught by [Todorow] as embodied by its etch reactor 100.”
`
`Pet. 62. Petitioner’s reasoning focuses on Todorow’s plasma stabilizer 170
`
`and lift mechanism 138 and reasons for combining these features with
`
`Sekiya’s dicing method. Id. at 58–64 (citing Ex. 1009 ¶¶ 126–141).
`
`Petitioner does not, however, adequately address why a POSITA would have
`
`used Todorow’s process chamber and plasma source when carrying out the
`
`plasma dicing method of Sekiya. Although Petitioner cites paragraphs 126–
`
`141 of the Spencer declaration, those paragraphs are substantively the same
`
`14
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`

`IPR2017-01314
`Patent 8,980,764 B2
`
`as the Petition and suffer from the same inadequacy. Compare Pet. 58–64,
`
`with Ex. 1009 ¶¶ 126–141.
`
`Petitioner acknowledges that Sekiya discloses a process chamber and
`
`plasma source for carrying out plasma dicing. Pet. 37, 45–48. More
`
`specifically, Petitioner contends that Sekiya teaches a process chamber in the
`
`form of dry-etching treatment chamber 33 and a plasma source in the form
`
`of electrodes 39. Id. at 37 (citing Sekiya ¶¶ 44, 45, Figs. 8, 9). Yet
`
`Petitioner does not provide a sufficient explanation for why a POSITA
`
`seeking to carry out Sekiya’s plasma dicing method would have substituted
`
`Todorow’s process chamber and plasma source for the process chamber and
`
`plasma source taught by Sekiya.
`
`Nor does Petitioner offer argument or evidence sufficient to show that
`
`the process chamber and plasma source of Todorow are interchangeable
`
`with the process chamber and plasma source of Sekiya. Patent Owner
`
`asserts that Sekiya differs from Todorow in that Sekiya uses capacitively-
`
`coupled plasma (CCP) and Todorow uses inductively-coupled plasma (ICP).
`
`Prelim. Resp. 36. Patent Owner’s assertion is supported by Petitioner’s
`
`evidence. Whereas Sekiya Figure 9 shows electrodes 39 within etching
`
`treatment chamber 33 (Ex. 1005 ¶ 33, Fig. 9), Todorow Figure 1 shows
`
`inductive coil 110 above dielectric ceiling 108 of process chamber 102
`
`(Ex. 1006 ¶ 18, Fig. 1). Petitioner acknowledges that these are “different
`
`types of plasma sources.” Pet. 27 (noting “a variety of different types of
`
`plasma sources, some of which include a coil configuration external the etch
`
`chamber, and others that include plate electrodes within the etch chamber”).
`
`Petitioner does not adequately explain why a POSITA would have
`
`substituted Todorow’s inductively-coupled plasma source external to the
`
`15
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`

`IPR2017-01314
`Patent 8,980,764 B2
`
`etch chamber for Sekiya’s capacitively-coupled plasma source within the
`
`etch chamber.
`
`Second, assuming that Sekiya is relied upon to teach claim elements
`
`B, C, and D, Petitioner fails to provide a sufficient rationale for combining
`
`Todorow’s plasma stabilizer 170 with Sekiya’s process chamber and plasma
`
`source. Petitioner does not explain sufficiently how a POSITA would have
`
`made such a combination or how it would have met the limitations of claim
`
`1. For example, Petitioner does not explain where Todorow’s plasma
`
`stabilizer 170 would have been positioned relative to Sekiya’s electrodes 39,
`
`which Petitioner identifies as a plasma source. Pet. 37. Claim 1 of the ’764
`
`patent recites “providing a mechanical partition positioned below the plasma
`
`source, said mechanical partition positioned above the work piece.”
`
`Ex. 1001, 16:8–10 (emphasis added). Petitioner does not explain how a
`
`plasma stabilizer could be positioned below Sekiya’s plasma source (both
`
`electrodes 39) and above the work piece (wafer W on lower electrode 39) in
`
`Sekiya’s process chamber. See Ex. 1005, Fig. 9.
`
`In the absence of an adequate explanation for how or why a POSITA
`
`would have combined Sekiya and Todorow with respect to claim elements
`
`B, C, and D, we are left with only the hindsight bias against which KSR
`
`warns. KSR, 550 U.S. at 421; Metalcraft of Mayville, Inc. v. Toro Co., 848
`
`F.3d 1358, 1367 (Fed. Cir. 2017) (“[W]e cannot allow hindsight bias to be
`
`the thread that stitches together prior art patches into something that is the
`
`claimed invention.”).
`
`Accordingly, we determine that Petitioner’s arguments and evidence
`
`do not establish a reasonable likelihood of prevailing on its contention that
`
`16
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`

`IPR2017-01314
`Patent 8,980,764 B2
`
`claim 1 is unpatentable as obvious in view of Sekiya, Todorow, Nisany, and
`
`Ogasawara.
`
`4. Claims 2–5
`
`Claims 2–5 of the ’764 patent each depends directly or indirectly from
`
`claim 1. Ex. 1001, 16:16–26.
`
`The deficiencies in Petitioner’s arguments and evidence regarding
`
`claim 1, as discussed above, are not remedied by Petitioner’s evidence and
`
`arguments regarding claims 2–5, which rely on the same rationales for
`
`combining Sekiya and Todorow. See Pet. 44, 52, 58–64.
`
`Accordingly, we conclude that Petitioner has not demonstrated a
`
`reasonable likelihood of prevailing on its challenge to claims 2–5 for the
`
`same reasons as discussed above with respect to claim 1.
`
`III. CONCLUSION
`
`Petitioner has not demonstrated a reasonable likelihood of prevailing
`
`with respect to claims 1–5 of the ’764 patent challenged in the Petition.
`
`IV. ORDER
`
`Accordingly, it is
`
`ORDERED that the Petition is denied.
`
`
`
`
`
`17
`
`

`

`IPR2017-01314
`Patent 8,980,764 B2
`
`PETITIONER:
`
`Adam Volentine
`avolentine@volentine.com
`
`
`PATENT OWNER:
`
`Harvey Kauget
`hkauget@burr.com
`
`Ryan Corbett
`rcorbett@burr.com
`
`
`
`18
`
`

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