USINO. GOV
`7S
`571-272-7822
`
`Paper 28
`Date: May 31, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TOKYO OHKA KOGYO., LTD.,
`Petitioner,
`
`V.
`
`FUJIFILM ELECTRONIC MATERIALS U.S.A., INC.,
`Patent Owner.
`
`PGR2022-00010
`Patent 10,927,329 B2
`
`
`Before JO-ANNE M. KOKOSKLIJON B. TORNQUIST, and
`JEFFREY W. ABRAHAM,Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 328(a)
`
`
`7S
`571-272-7822
`
`Paper 28
`Date: May 31, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TOKYO OHKA KOGYO., LTD.,
`Petitioner,
`
`V.
`
`FUJIFILM ELECTRONIC MATERIALS U.S.A., INC.,
`Patent Owner.
`
`PGR2022-00010
`Patent 10,927,329 B2
`
`
`Before JO-ANNE M. KOKOSKLIJON B. TORNQUIST, and
`JEFFREY W. ABRAHAM,Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 328(a)
`
`
`
`PGR2022-00010
`Patent 10,927,329 B2
`
`I.
`
`INTRODUCTION
`
`Wehavejurisdiction to conductthis post-grant review under
`
`35 U.S.C. § 6, and issue this Final Written Decision pursuant to 35 U.S.C.
`
`§ 328(a). For the reasons that follow, we determine that Tokyo Ohka Kogyo
`
`Co., Ltd.! (“Petitioner”) has shown by a preponderanceof the evidence that
`
`claims 1-15 (“the challenged claims”) of U.S. Patent No. 10,927,329 B2
`
`(“the ’329 patent,” Ex. 1001) are unpatentable.
`
`A. Procedural Background
`
`Petitioner filed a Petition requesting post-grant review of claims 1—15
`
`of the °329 patent. Paper 2 (“Pet.”). FUJIFILM Electronic Materials
`
`US.A., Inc.” (“Patent Owner’’) filed a Preliminary Response. Paper 6. With
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`Board authorization, Petitioner filed a Preliminary Reply (Paper 7) and
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`Patent Ownerfiled a Preliminary Sur-reply (Paper 8). Pursuant to 35 U.S.C.
`
`§ 324(a), we instituted a post-grant review of claims 1-15 on the grounds
`
`advanced in the Petition. Paper 9, 4, 19.
`
`After institution of trial, Patent Ownerfiled a Patent Owner Response
`
`(“PO Resp.,” Paper 15), Petitioner filed a Reply (“Pet. Reply,” Paper 19),
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`and Patent Ownerfiled a Sur-reply (“PO Sur-reply,” Paper 21). We held an
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`oral hearing on March 8, 2023, and a transcript is includedin the record.
`
`Paper 27.
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`B. Related Matters
`
`Petitioner states that it “is not aware of any judicial proceedingsthat
`
`would affect or be affected by this proceeding,” and identifies several
`
`patents and patent applicationsthat it asserts are related to the °329 patent.
`
`' Petitioner identifies itself as the real party-in-interest. Pet. 83.
`Patent Owneridentifies itself as the real part-in-interest. Paper 4, 2.
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`2
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`Patent 10,927,329 B2
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`Pet. 84. Patent Owneridentifies two patents and a patent application thatit
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`asserts claim priority to the °329 patent. Paper4, 2.
`
`C. The ’329 Patent
`
`The °329 patent, titled “Cleaning Formulations for Removing
`
`Residues on Surfaces,” relates to a cleaning composition for semiconductor
`
`substrates, and particularly to a cleaning composition for removing residues
`
`such as plasmaetch and plasma ash formed on semiconductor substrates.
`
`Ex. 1001, code (54), 1:21-29. The disclosed compositionsinclude,in
`
`various concentrations, “at least one redox agent” (id. at 3:47—50), “at least
`
`one first chelating agent”(id. at 3:62—64), “at least one metal corrosion
`
`inhibitor,” (id. at 10:24—25), “at least one organic solvent”(id. at 10:66—
`
`11:2), and water (id. at 12:3-4). The compositions “may contain”or
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`“specifically exclude” one or more additives. /d. at 15:9-22. The additive
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`may be a pH adjusting agent present in amounts of “at least about 0.1% by
`
`weight(e.g., at least about 0.5% by weight, at least about 1% by weight, or
`
`at least about 1.5% by weight) and/or at most about 3% by weight(e.g., at
`
`most about 2.5% by weight, at most about 2% by weight, or at most about
`
`1.5% by weight).” /d. at 12:36-43. The pH adjusting agent may be an
`
`alkanolamine. /d. at 12:45—49.
`
`The °329 patent states that the cleaning composition is “generally non-
`
`corrosive to exposed substrate materials (e.g., exposed metals such as
`
`aluminum, aluminum/copperalloy, copper, titanium, tantalum, tungsten,
`
`cobalt, and metal nitrides such as titantum and tungsten nitrides)” and that
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`“it can clean a broad range of residues.” Ex. 1001, 2:28-33.
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`Patent 10,927,329 B2
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`D.
`
`Illustrative Claim
`
`Petitioner challenges claims 1—15 of the ’329 patent. Claim 1, the
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`only independentclaim, is illustrative of the challenged claims and is
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`reproduced below:
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`1. A cleaning composition, comprising:
`
`1) hydroxylamine;
`
`2) an alkanolamine in an amount of at most about 3% by
`weight of the composition;
`
`3) an alkylene glycol; and
`
`4) water
`
`wherein the pH of the composition is from about 7 to about 11.
`
`Ex. 1001, 29:1-9.
`
`E. Evidence
`
`Petitioner relies on the evidence listed below (Pet. 13-14):
`
`
`
`US 2013/0061882 Al (‘Wu’)
`March 14, 2013
`US 2007/0060490 Al (“Skee”)
`March 15, 2007
`1012
`
`
`
`
`
`Petitioner also relies on the Declaration of Alexander Glew, Ph.D.
`
`(Ex. 1007). Patent Ownerrelies on the Second Declaration of Reinhold H.
`
`Dauskardt (Ex. 2009).
`
`
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`PGR2022-00010
`Patent 10,927,329 B2
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`F. Asserted Grounds
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`Petitioner asserts that claims 1-15 would have been unpatentable on
`
`the following grounds:
`
`1-15
`
`
`
`
`
`
`
`
`
`
`Lack of Written Description Support
`112(a)
`
`103°
`Wu
`
`
`Wu, Skee
`103
`
`Pet. 13.
`
`A. Level of Ordinary Skill in the Art
`
`II. ANALYSIS
`
`Petitioner contendsthat a person having ordinaryskill in the art
`
`(“POSA”) “would have had a Bachelor degree in materials science,
`
`engineering, chemistry or similar technical discipline, and had at least two
`
`years of experience relating to the design and development of semiconductor
`
`manufacturing processes.” Pet. 14. Petitioner further submits that,
`
`“Ta]lternatively, such a person may have had additional graduate education
`
`as a Substitute for professional experience, or significant work experience as
`
`a substitute for formal education.” /d. Patent Ownerstates that, “[w]ithout
`
`taking a position on the correctness of this definition, Patent Ownerapplies
`
`Petitioner’s POSA definition.” PO Resp. 11 (citing Pet. 14).
`
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
`Petitioner contends, and Patent Ownerdoes not contest, that “the earliest
`priority date claimed by the ’329 patent” is December6, 2013. Pet. 13;
`PO Resp. 6. Because the undisputed earliest claimed priority date of
`the °329 patent is after March 16, 2013, we apply the AJAversionsof
`§§ 102 and 103.
`
`
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`Patent 10,927,329 B2
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`WeadoptPetitioner’s proposed definition, which is undisputed on this
`
`record, and is consistent with the level of skill in the art at the time of the
`
`invention as reflected in the prior art in this proceeding.
`
`B. Claim Construction
`
`Weconstrue each claim “in accordance with the ordinary and
`
`customary meaning of such claim as understood by one of ordinary skill in
`
`the art and the prosecution history pertaining to the patent.” 37 C.F.R.
`
`§ 42.100(b). Under this standard, claim terms are generally given their plain
`
`and ordinary meaning as would have been understood by a person of
`
`ordinary skill in the art at the time of the invention and in the context of the
`
`entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.
`
`Cir. 2005) (en banc). Only those terms in controversy need to be construed,
`
`and only to the extent necessary to resolve the controversy. See Nidec
`
`Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
`
`(Fed. Cir. 2017).
`
`Based on our review of the complete record and the arguments raised
`
`by the parties, we determineit is necessary to expressly construe the term
`
`“cleaning composition”recited in claim 1 in order to resolve the controversy
`
`betweenthe parties.
`
`Theparties agree that the recited “cleaning composition”is a
`
`composition for removing residues from substrates. PO Resp. 12 (proposing
`
`that “cleaning composition”be construed to mean “a composition for
`
`removing residues from a semiconductor substrate, comprising at least a
`
`redox agent, a chelating agent, a metal corrosion inhibitor, an organic
`
`solvent, and water’); Pet. Reply 2 (“[T]he recited ‘cleaning composition’
`99 66
`
`should be accordedits plain and ordinary meaning,”
`
`“which is a
`299
`‘composition for removing residues from substrates.’”). The dispute centers
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`Patent 10,927,329 B2
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`on Patent Owner’s requirement that the construction of “cleaning
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`composition” additionally includesthat it “compris[es] at least a redox
`
`agent, a chelating agent, a metal corrosion inhibitor, an organic solvent, and
`
`water.”
`
`Webegin our analysis with the language of the claims. Phillips,
`
`415 F.3d at 1312; see also SuperGuide Corp. v. DirecTV Enterprises, Inc.,
`
`358 F.3d 870, 874-874 (Fed. Cir. 2004) (“There is a ‘heavy presumption’
`
`that the terms used in the claims “mean what they say and have the ordinary
`
`meaning that would be attributed to those words by personsskilled in the
`
`relevant art.””). Claim 1 states that the “cleaning composition” comprises
`99 66
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`“hydroxylamine,”
`
`“an alkanolamine in an amount of at most about 3% by
`99 66
`
`weight of the composition,”
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`“an alkylene glycol,” and “water.” Ex. 1001,
`
`29:2—7. The claim also recites that “the pH of the composition is from
`
`about 7 to about 11.” /d. at 29:8—9. A plain reading of the claim text reveals
`
`that the recited “cleaning composition”is a composition for cleaning that
`
`includes the recited components and has the recited pH. The claim is silent,
`
`however, as to the specific purpose of the cleaning composition.
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`Weturn nextto the specification. Phillips, 415 F.3d at 1315; see also
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`SuperGuide, 358 F.3d at 875 (“Wereview the patent’s written description
`
`and drawings to confirm that the patentee’s use of the disputed term is
`
`consistent with the meaning given to it by the court.”’); see also Brownv.
`
`3M, 265 F.3d 1349, 1352 (Fed. Cir. 2001) (finding that the plain reading of
`
`the claim text is sufficient to construe terms that “are not technical terms of
`
`art” and, therefore, “do not require elaborate interpretation”). The °329
`
`patent consistently states that the disclosed cleaning composition 1s for
`
`removing residues formed on semiconductor substrates. See, e.g., Ex. 1001,
`
`code (57) (stating that the cleaning composition is used “for cleaning a
`
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`PGR2022-00010
`Patent 10,927,329 B2
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`semiconductor substrate”), 2:10-12 (“the cleaning solution should be
`
`effective for removing the plasma etch and plasma ash residues”), 15:52—55
`
`(“[T]he cleaning compositions of the present disclosure are generally
`
`designed to removeall residues after bulk resist removal by dry or wet
`
`stripping methods.”’). For example, the “Field of the Disclosure” section of
`
`the °329 patent states that the disclosure is directed to a cleaning
`
`composition for semiconductor substrates:
`
`to a novel cleaning
`The present disclosure relates
`composition for semiconductor substrates and a method of
`cleaning semiconductor substrates. More particularly,
`the
`present disclosure relates to a cleaning composition for removing
`plasma etch residues formed on semiconductor substrates after
`plasma etching of metal
`layers or dielectric material
`layers
`deposited on the substrates and the removal of residues left on
`the substrates after bulk resist removal via a plasma ashing
`process.
`
`Id. at 1:23-29, The “Summaryof the Disclosure”section similarly states:
`
`The present disclosure is directed to a non-corrosive
`cleaning composition that
`is useful primarily for removing
`residues (e.g., plasma etch and/or plasmaashing residues) from
`a semiconductor substrate as an intermediate step in a multistep
`process. ... An advantage of the cleaning composition described
`herein is that it can clean a broad range of residues encountered
`and be generally non-corrosive to exposed substrate materials
`(e.g., exposed metals such as aluminum, aluminum/copperalloy,
`copper, titanium, tantalum, tungsten, cobalt, and metal nitrides
`such as titanium and tungsten nitrides).
`
`Id. at 2:17-33.
`
`Read as a whole, the specification supports the conclusion that a
`
`“cleaning composition”as recited in claim 1 of the ’329 patentis “a
`
`composition for removing residues from semiconductor substrates.”
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`Patent 10,927,329 B2
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`Patent Ownerarguesthat “cleaning composition” should be construed
`
`to also include a redox agent, a chelating agent, a metal corrosion inhibitor,
`
`an organic solvent, and water. Patent Owner’s argumentsin this regard are
`
`premised on the parties’ agreementthat “[t]he ’329 patent’s disclosure is
`
`unambiguously explicit regarding mandatory components of the cleaning
`
`compositions described therein.” PO Resp. 15 (citing Pet. 17; Ex. 1007
`
`{| 56-57) (alterations in original). Patent Ownerassertsthat it also “agrees
`
`with Petitioner that ‘[a] POSA would not have understood the inventors of
`
`the 329 patent to have possessed ‘chelating agent-less’ and ‘corrosion
`
`inhibitor-less’ cleaning compositions.” /d. (citing Pet. 17; Ex. 2009 § 53)
`
`(alteration in original). Because “a POSA would have understoodthat the
`
`specification makesit abundantly clear that the claimed cleaning
`
`composition includes a redox agent, a chelating agent, a metal corrosion
`
`inhibitor, an organic solvent, and water”(id.), Patent Ownerarguesthat “the
`
`claim must be given the meaning consistent with that understanding—the
`
`claimed ‘cleaning composition’ includes a redox agent, a chelating agent, a
`
`metal corrosion inhibitor, an organic solvent, and water” (PO Sur-reply 9).
`
`Wedisagree. It is clear from the plain language of claim | that the
`
`claimed “cleaning composition” is a composition for cleaning that includes
`
`four named components and has a specified pH. Ex. 1001, 29:2-9.
`
`The °329 patent specification unambiguously teaches that the cleaning
`
`composition is for removing residues from semiconductor substrates. /d.
`
`at 1:23—29, 2:10-12, 2:17-33, 15:52-55.
`
`Although the ’329 patent describes a cleaning composition that
`
`comprises a redox agent, a chelating agent, a metal corrosion inhibitor, an
`
`organic solvent, and water, we see no reason to construe the term “cleaning
`
`composition”itself to require these components. Claim | expressly recites
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`PGR2022-00010
`Patent 10,927,329 B2
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`the components that comprise the claimed “cleaning composition,” without
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`expressly including or precluding a chelating agent or a metal corrosion
`
`inhibitor. Ex. 1001, 29:2-9. The Federal Circuit advises that the
`
`specification “is not a suitable substitute for, nor can it be used to rewrite,
`
`the chosen claim language.
`
`‘Specifications teach. Claims claim.’”
`
`SuperGuide, 358 F.3d at 875 (quoting SRI Int'l v. Matsushita Elec. Corp. of
`
`Am., 775 F.2d 1107, 1121 n. 14 (Fed. Cir. 1985) (en banc)). The *329 patent
`
`specification does teach a cleaning composition that includes a redox agent,
`
`a chelating agent, a metal corrosion inhibitor, an organic solvent, and water,
`
`but claim 1 is directed to a cleaning composition that expressly requires only
`
`a subset of those components. Patent Owner’s proposed construction would
`
`effectively rewrite the claim by adding unclaimed components, which we
`
`decline to do under the guise of claim construction. See id. (“Though
`
`understanding the claim language may beaided by the explanations
`
`contained in the written description, it is important not to import into a claim
`
`limitations that are not a part of the claim.”’).
`
`Patent Owneralso arguesthat “a broad construction of the term
`
`‘cleaning composition’ would ‘likely render the claims invalid for lack of
`
`written description”and,as a result, “cleaning composition” should be
`
`construed to preserve the validity of claim 1. PO Resp. 20-21 (citing
`
`Ruckus Wireless, Inc. v. Innovative Wireless Sols., LLC, 824 F.3d 999, 1004
`
`(Fed. Cir. 2016)). The Federal Circuit instructs, however, that “unless the
`
`court concludes, after applying all the available tools of claim construction,
`
`that the claim is still ambiguous, the axiom regarding the construction to
`
`preserve validity of the claim does not apply.” Liebel-Flarsheim Co.v.
`
`Medrad, Inc., 358 F.3d 898, 911 (Fed, Cir. 2004); see also Phillips, 415 F.3d
`
`at 1327 (“While we have acknowledged the maxim that claims should be
`
`10
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`Patent 10,927,329 B2
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`construed to preserve their validity, we have not applied that principle
`
`broadly, and wehavecertainly not endorsed a regime in which validity
`
`analysis is a regular componentof claim construction.”). Because we
`
`conclude that the intrinsic record is unambiguous, and reach a determination
`
`based on that unambiguousrecord, we do not needto resort to this validity
`
`canon in order to construe the challenged claims.
`
`Accordingly, we find that the intrinsic evidence is unambiguous and
`
`decline to adopt Patent Owner’s construction and the additional limitation
`
`that the “cleaning composition” comprises a redox agent, a chelating agent, a
`
`metal corrosion inhibitor, an organic solvent, and water. PO Resp. 12. We
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`construe “cleaning composition” to mean “a composition that removes
`
`residues from semiconductor substrates.”
`
`C. Alleged Lack of Written Description Support
`
`To satisfy the written description requirement under 35 U.S.C.
`
`§ 112(a), the specification must “reasonably convey|] to those skilled in the
`
`art that the inventor had possession” of the claimed invention as of the filing
`
`date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
`
`2010) (en banc). An adequate description does not require any particular
`
`form of disclosure or that the specification recite the claimed invention in
`
`haec verba, but must do morethan render the claimed invention obvious.
`
`Id. at 1352. In evaluating the adequacyof the disclosure, a court may
`
`consider “the existing knowledge in the particular field, the extent and
`
`content of the prior art, the maturity of the science or technology, [and] the
`
`predictability of the aspect at issue.” Capon v. Eshhar, 418 F.3d 1349, 1359
`
`(Fed. Cir. 2005) (cited with approval in Ariad, 598 F.3d at 1352); see also
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`Boston Sci. Corp. v. Johnson & Johnson, 647 F.3d 1353, 1366 (Fed. Cir.
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`2011) (holding that because the assessment for written description is made
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`11
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`from the perspective of a POSA, in someinstances, a patentee can rely on
`
`information that is “well-knownin the art” to satisfy written description).
`
`Petitioner argues that the ’329 patent specification does not provide
`
`adequate written description support for the challenged claims. Pet. 15—43.
`
`Specifically, Petitioner argues that the ’329 patent describes cleaning
`
`compositions that contain at least one redox agent, at least one first chelating
`
`agent, at least one metal corrosion inhibitor, at least one organic solvent, and
`
`water “as mandatory components.” /d. at 18 (citing Ex. 1007 4 71).
`
`Petitioner then argues that the ’329 patent does not disclose “any
`
`composition that omits these mandatory components—particularly the ‘first
`
`chelating agent’ and the ‘metal corrosion inhibitor.’” /d. Petitioner also
`
`argues that, because claim | recites a cleaning composition that does not
`
`include a first chelating agent or a metal corrosion inhibitor, “[a] POSA
`
`would not have understood the inventors of the 7329 patent to have
`
`possessed ‘chelating agent-less’ and ‘corrosion inhibitor-less’ cleaning
`
`compositions.” /d. at 17.
`
`Patent Owner respondsthat “a POSA would have understood that the
`
`purportedly ‘essential’ features are not absent from the claims.” PO
`
`Resp. 23. Specifically, Patent Owner contends that the claims are open-
`
`ended and thus do not preclude a chelating agent or corrosion inhibitor. /d.
`
`Patent Owneralso contendsthat “a POSA would have been informedby the
`
`specification about other necessary components in the inventive
`
`compositions to achieve the intended purpose of the invention.” /d. at 24
`
`(citing Ex. 2009 §] 73). Patent Owneralso asserts thatit “has never intended
`
`to claim ‘chelating agent-less’ and ‘corrosion inhibitor-less’ cleaning
`
`compositions.” /d.
`
`12
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`Based on our review of the full record now before us, we determine
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`that Petitioner establishes that the °329 patent does not provide sufficient
`
`written description support for the challenged claims. Pet. 15—43; Ex. 1007
`
`{| 56-82. More specifically, we find that the °329 patent does not
`
`reasonably convey to a POSAthat the inventor was in possession of
`
`cleaning compositions that do not include a chelating agent or a metal
`
`corrosion inhibitor.
`
`There is no dispute, on this record, that the °329 patent specification
`
`explicitly teaches that a redox agent, a chelating agent, a metal corrosion
`
`inhibitor, an organic solvent, and water are mandatory components of the
`
`cleaning composition described therein. PO Resp. 15 (Patent Owner
`
`agreeing with Petitioner that “[t]he °329 patent’s disclosure is
`
`unambiguously explicit regarding mandatory componentsof the cleaning
`
`compositions described therein.” (citing Pet. 17; Ex. 1007 4] 56-57)
`
`(emphasis omitted, alteration in original)); see Ex. 1001, 3:47-48, 3:62-64,
`
`10:24—26, 10:66—11:2, 12:3-4; Ex. 1007 4] 56-67. Claim 1, however, does
`
`not require that the cleaning composition include a chelating agent or a
`
`metal corrosion inhibitor. Ex. 1001, 29:2—9. Therefore, establishing proper
`
`written description support for claim 1 requires more than showingthat the
`
`inventor was in possession of a cleaning composition that includes a redox
`
`agent, a chelating agent, a metal corrosion inhibitor, an organic solvent, and
`
`water; the °329 patent must also show that the inventor was in possession of
`
`a cleaning composition that includes only a redox agent (hydroxylamine), an
`
`organic solvent (an alkylene glycol), water, and an alkanolamine. /d.
`
`Patent Owner’s argumentsthat the challenged claimsare sufficiently
`
`supported by the ’329 patent’s disclosure are premised on its proposed claim
`
`construction which,as set forth above, we decline to adopt. Patent Owner
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`13
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`does not address whether the challenged claimsare sufficiently supported by
`
`the ’329 patent using any other construction of “cleaning composition.”
`
`By agreeing with Petitioner that “‘[a] POSA would not have
`
`understood the inventors of the ’329 patent to have possessed ‘chelating
`
`agent-less’ and ‘corrosion inhibitor-less’ cleaning compositions,” Patent
`
`Ownerconcedesthat the challenged claims lack adequate written description
`
`support. PO Resp. 15 (citing Pet. 17; Ex. 2009 § 53) (alteration in original).
`
`Patent Owneralso recognizesthat “a broad construction of the term
`299
`
`‘cleaning composition’”
`
`that does not include a redox agent, a chelating
`
`agent, a metal corrosion inhibitor, an organic solvent, and water “would
`
`‘likely render the claims invalid for lack of written description.’” /d. at 20-
`
`21.
`
`For these reasons, we determine that Petitioner shows, by a
`
`preponderanceof the evidence, that independentclaim 1, and claims 2—15
`
`that directly depend therefrom, lack written description support in the ’329
`
`patent.
`
`D. Alleged Obviousness over Wu or Wu and Skee
`
`Petitioner contends that claims 1—15 would have been obvious over
`
`the teachings of Wu, or the combined teachings of Wu and Skee. Pet. 43—
`
`81. Because we determine that Petitioner has established by a
`
`preponderanceof the evidence claims 1—15 lack written description support
`
`in the *329 patent, we decline to address these grounds.
`
`14
`
`
`
`PGR2022-00010
`Patent 10,927,329 B2
`
`III. CONCLUSION?
`
`After reviewing the record and weighing the evidence offered by both
`
`parties, we determine that Petitioner has shown, by a preponderance of the
`
`evidence, that claims 1—15 are unpatentable because they lack sufficient
`
`written description support in the °329 patent.
`
`In summary:
`
`
`
`
`
`
`
`
`
` Lack
`of Written
`
`Description
`Support
`
`
`Overall
`
`Outcome
`
`+ Should Patent Owner wish to pursue amendmentofthe challenged claims
`in a reissue or reexamination proceeding subsequent to the issuance of this
`decision, we draw Patent Owner’s attention to the April 2019 Notice
`Regarding Options for Amendments by Patent Owner Through Reissue or
`Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
`16,654 (Apr. 22, 2019). If Patent Owner choosestofile a reissue application
`or a request for reexamination of the challenged patent, we remind Patent
`Ownerofits continuing obligation to notify the Board of any such related
`matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
`> As explained above, we do not reach this ground because Petitioner shows
`that the challenged claims are unpatentable because they lack sufficient
`written description support in the °329 patent.
`° As explained above, we do notreach this ground because Petitioner shows
`that the challenged claims are unpatentable because they lack sufficient
`written description support in the °329 patent.
`
`15
`
`
`
`PGR2022-00010
`Patent 10,927,329 B2
`
`IV. ORDER
`
`In consideration of the foregoing,it is hereby:
`
`ORDEREDthat Petitioner has shown by a preponderanceofthe
`
`evidence that claims 1—15 of the ’329 patent are unpatentable; and
`
`FURTHER ORDEREDthat, because this 1s a Final Written Decision,
`
`parties to the proceeding seeking judicial review of the Decision must
`
`comply with the notice and service requirements of 37 C.F.R. § 90.2.
`
`FOR PETITIONER:
`
`Nathanael R. Luman
`Kerry Taylor
`Jonathan E. Bachand
`Andrew E. Morrell, Ph.D.
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2nrl@knobbe.com
`2kst@knobbe.com
`2jeb@knobbe.com
`2eam@knobbe.com
`
`FOR PATENT OWNER:
`
`Eliot D. Williams
`Robert L. Maier
`Frank Zhu
`BAKER BOTTS L.L.P.
`eliot.williams@bakerbotts.com
`robert.maier@bakerbotts.com
`frank.zhu@bakerbotts.com
`
`16
`
`
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