ArcelorMittal

Patent Trials and Appeals Board

Jan 5, 2021

IPR2019-01275 (P.T.A.B. Jan. 5, 2021)

Trials@uspto.gov Paper 31
571-272-7822 Date: January 5, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

POSCO,
Petitioner,
v.
ARCELORMITTAL,
Patent Owner.

IPR2019-01275
Patent 9,708,683 B2

Before CHRISTOPHER L. CRUMBLEY, MICHELLE N. ANKENBRAND,
and DEBRA L. DENNETT, Administrative Patent Judges.
ANKENBRAND, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

I. INTRODUCTION
This is a Final Written Decision in an inter partes review challenging
the patentability of claims 1–11 (collectively, the “challenged claims”) of
U.S. Patent No. 9,708,683 B2 (“the ’683 patent,” Ex. 1001). We have
jurisdiction under 35 U.S.C. § 6. We issue this Final Written Decision under
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35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons that follow, we
determine that Petitioner demonstrates, by a preponderance of the evidence,
that the challenged claims are unpatentable.
A. Procedural History
POSCO (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting an
inter partes review under 35 U.S.C. § 311. ArcelorMittal (“Patent Owner”)
filed a Preliminary Response. Paper 5 (“Prelim. Resp.”). On January 8,
2020, we instituted an inter partes review of the challenged claims. Paper 7
(“Institution Decision” or “DI”).
Following institution, Patent Owner filed a Response (Paper 18,
“Resp.”), Petitioner filed a Reply (Paper 23, “Reply”), and Patent Owner
filed a Sur-reply (Paper 24, “Sur-reply”).
Petitioner relies on the Declaration of Michael Miles, Ph.D.
(Ex. 1003), and submitted a Rebuttal Declaration (Ex. 1051) from Dr. Miles
and a Declaration of Jinkeun Oh (Ex. 1066) with its Reply. Patent Owner
took cross-examination testimony of Dr. Miles via deposition and filed the
transcript (Ex. 2011).
Patent Owner relies on the Second Declaration of Dr. Anthony J.
DeArdo (Ex. 2010) in its Response. Petitioner took cross-examination
testimony of Dr. DeArdo via deposition and filed the transcript (Ex. 1052).
We heard oral argument on October 7, 2020, and the record includes a
transcript of the argument. Paper 30 (“Tr.”).
B. Related Matters
The ’683 patent is a divisional of U.S. Application No. 12/447,777,
filed March 18, 2011, which issued as U.S. Patent No. 8,307,680 on
November 13, 2012. Paper 4, 2. Patent Owner identifies additional United
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States patent applications that are either continuation applications of the
’683 patent or claim the benefit of the ’683 patent. Id.
C. The ’683 Patent
The ’683 patent issued on July 18, 2017. Ex. 1001, at [45]. The ’683
patent relates to, among other things, coated steels and stamped products
prepared from coated steels. Id. at 1:18–22. According to the Specification,
“the use of pre-coated steels in hot-stamping processes for the shaping of
parts has become important, especially in the automotive industry.” Id. at
1:40–42. Main steps for making the parts include: pre-coating steel sheets
by hot dipping, trimming or cutting the sheets to form blanks, heating the
blanks “to obtain alloying of the steel substrate with the pre-coating, as well
as the austenitizing of the steel, and “[h]ot forming followed by rapid
cooling of the part in order to obtain predominantly martensitic structures.”
Id. at 1:43–50.
The parts obtained after heating and rapid cooling “display very high
mechanical resistance and may be used for structural applications” in the
automotive industry. Id. at 2:6–9. Such parts frequently are welded with
others and, therefore, require high weldability. Id. at 2:9–27. The ’683
patent states that “[t]here remains a need for coated steels which may be
conveniently used to prepare shaped parts by a stamping process” “which
are suitable for welding.” Id. at 2:28–34.
The Specification explains that the inventors have discovered that:
(1) controlling “the homogeneity of the pre-coating thickness over the entire
sheet within given tolerances is an important factor for obtaining the desired
degree of intermetallic alloying”; (2) “particularly good weldability of
aluminized and hot stamped parts is associated with a special succession of
coating layers on the parts, proceeding from the steel substrate outwards”;
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and (3) “a specific combination of transfer time between the heating furnace
and the stamping die, the amount of deformation during stamping, the
temperature of stamping, [and] the cooling rate of the product during
stamping” results in a fabricated part “with a fully homogeneous martensitic
structure.” Id. at 2:57–3:6, 6:14–30 (describing the layers), 7:7–46
(describing preferred heating, heating rate, and dwell time conditions for
obtaining favorable layer deposition), 7:47–51 (explaining that “[a] special
advantage arises from pre-coatings” with a thickness between 20 and 33
micrometers), 7:52–56 (describing the hot forming and cooling processes
during stamping).
Figure 1 depicts “a preferred embodiment of an invention coated part,
after heat treatment and stamping.” Id. at 3:57–58. We reproduce Figure 1
below.

Figure 1 is a photo of a coated part after heat treatment and stamping,
depicting the order of coating layers on a steel substrate is, proceeding from
the substrate outwards: (a) interdiffusion layer; (b) intermediate layer;
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(c) intermetallic layer; and (d) superficial layer. Id. at 3:58–61. “This
arrangement is particularly favorable for the further welding of the part.” Id.
at 3:61–62.
D. Illustrative Claim
Claim 1 is the only independent claim and illustrative of the claimed
subject matter. Claim 1 recites:
1. A coated steel stamped product, which comprises:
(a) a strip of base steel having a first side and a second
side; and
(b) a coating on at least one of said first side of said strip
of base steel and said second side of said strip of base
steel,
wherein:
(i) said coating results from the interdiffusion between
said base steel, and aluminum or aluminum alloy pre-
coating, and
(ii) wherein said coating comprises, proceeding from the
base steel outwards:
(a) an Interdiffusion layer,
(b) an Intermediate layer,
(c) an Intermetallic layer, and
(d) a Superficial layer,
wherein said coating has a thickness greater than 30
micrometers and wherein said layer (a) has a thickness
less than 15 micrometers.
Ex. 1001, 15:21–39.
Claims 2–11 depend directly from claim 1. Claim 2 recites that layers
(c) and (d) are quasi continuous by occupying at least 90% of a level
corresponding to each layer and limits layer (c) to less than 10% at an
extreme surface of the product. Id. at 15:40–44. Claims 3–6 recite
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components and compositions of the steel in the strip and claim 7 recites a
composition of the aluminum or aluminum alloy pre-coating. Id. at 15:45–
16:36. Claim 8 recites a land motor vehicle comprising the heat treated
coated steel product. Id. at 16:37–38. Claim 9 recites a hot formed product
with a strain higher than 10% and a cooling rate higher than 50°C/s. Id. at
16:39–41. Claim 10 recites a coated stamped steel product wherein the
product includes a full martensitic structure. Id. at 16:42–43. Claim 11
recites a layer (a) thickness of less than 10 micrometers. Id. at 16:44–46.
E. The Instituted Grounds of Patentability
We instituted an inter partes review of the challenged claims on the
following grounds of unpatentability:
Claim(s) Challenged 35 U.S.C. §1 Reference(s)/Basis
1, 2 102 Cornette2
8, 11 103 Cornette
3, 4, 6, 7, 10 103 Cornette, Laurent3
11 103 Cornette, Laurent, EP Laurent,4
FR Laurent5

1 Because the claims at issue have an effective filing date before March 16,
2013, the effective date of the applicable provisions of the Leahy Smith
America Invents Act, Pub. L. No. 112–29, 125 Stat. 284 (2011) (“AIA”), we
apply the pre-AIA versions of 35 U.S.C. §§ 102, 103 in this decision.
2 C. Cornette et al., High Strength Steels for Automotive Safety Parts,
Society of Auto. Engineers, Inc. (2001) (Ex. 1004)
3 US 6,296,805 B1, issued Oct. 2, 2001 (Ex. 1008).
4 EP 1 013 785 B1, issued Oct. 25, 2006 (Ex. 1012).
5 FR 2,833,504, published June 20, 2003 (Ex. 1009). In this decision, we
rely on the certified English translation of FR Laurent that Petitioner
provides as Exhibit 1010.
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Claim(s) Challenged 35 U.S.C. §1 Reference(s)/Basis
5 103 Cornette, Nishibata6
9 103 Cornette, Somani7
11 103 Cornette, Engels8
II. ANALYSIS
A. Legal Standards
To prevail in its challenge, Petitioner must demonstrate by a
preponderance of the evidence that the claims are unpatentable. 35 U.S.C.
§ 316(e); 37 C.F.R. § 42.1(d). To establish anticipation, each limitation in a
claim must be found in a single prior art reference, arranged as recited in the
claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir.
2008). Although the elements must be arranged or combined in the same
way as in the claim, “the reference need not satisfy an ipsissimis verbis test.”
In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the claimed subject matter and the prior art are such that the subject
matter, as a whole, would have been obvious at the time of the invention to a
person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 406 (2007). The question of obviousness is resolved on the basis
of underlying factual determinations including: (1) the scope and content of

6 WO 2004/106573 A1, published Dec. 9, 2004 (Ex. 1006). In this decision,
we rely on the certified English translation of Nishibata that Petitioner
provides as Exhibit 1007.
7 Mahesh Somani et al., Dimensional Changes & Microstructural Evolution
in a B-bearing Steel in the Simulated Forming & Quenching Process,
41 ISIJ Int’l 361–367 (2001) (Ex. 1005).
8 H. Engels et al., Controlling & Monitoring of the Hot-Stamping Process of
Boron-Alloyed Heat-Treated Steels, in New Developments in Sheet Metal
Forming (Mathias Liewald ed., 2006) (Ex. 1041).
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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) objective evidence of
nonobviousness, i.e., secondary considerations.9 See Graham v. John Deere
Co., 383 U.S. 1, 17–18 (1966). Subsumed within the Graham factors are the
requirements that all claim limitations be found in the prior art references
and that the skilled artisan would have had a reasonable expectation of
success in combining the prior art references to achieve the claimed
invention. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007).
“Obviousness does not require absolute predictability of success . . . all that
is required is a reasonable expectation of success.” In re O’Farrell, 853
F.2d 894, 903–4 (Fed. Cir. 1988).
Moreover, “[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR, 550 U.S. at 416. “If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.” Id. at
417.
B. Level of Ordinary Skill in the Art
In the Institution Decision, we determined that a person of ordinary
skill in the art “would have had at least an undergraduate degree in materials
science, manufacturing engineering, mechanical engineering, or equivalent
knowledge, training, or experience, with at least two years of experience
working on the development of steels” because that description was
undisputed and consistent with the level of skill reflected in the prior art.

9 The record does not contain evidence or argument regarding objective
evidence of non-obviousness.
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DI 7–8 (adopting Dr. Miles’s description of the level of ordinary skill in the
art, a description with which Dr. DeArdo agreed).
For purposes of this Final Written Decision, we maintain our
determination from the Institution Decision because neither party disputes
that determination and because that level of ordinary skill is consistent with
the record.
C. Claim Construction
In an inter partes review, we construe claim terms according to the
standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed.
Cir. 2005) (en banc). 37 C.F.R. § 42.100(b). Under that standard, we
construe claims “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).
Furthermore, we expressly construe the claims only to the extent necessary
to determine whether to institute inter partes review. See Nidec Motor
Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017
(Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy,
and only to the extent necessary to resolve the controversy.’” (quoting Vivid
Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
In the Petition, Petitioner proposed constructions for the terms
“interdiffusion,” “an Interdiffusion layer,” “an Intermediate layer,” and “a
Superficial layer” (collectively, the “layer limitations” or the “layer terms”).
Pet. 20–24. Patent Owner’s Preliminary Response addressed the term
“layer” and also proposed that the preamble of claim 1 is a limitation.
Prelim. Resp. 26–27, 33–39.
In our Institution Decision, we first addressed claim 1’s preamble and
then turned to the layer limitations. As to the preamble, we determined that
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Patent Owner’s argument did not persuade us that the preamble was a
limitation of claim 1. DI 9–10. We further noted it appeared to us that the
preamble language may be a process limitation not entitled to patentable
weight. Id. at 10. Because neither Petitioner nor Patent Owner had
addressed whether the preamble is a product-by-process limitation, or
whether a stamped product has structural or functional differences from a
non-stamped product, we did not take a position on whether the preamble is
a limitation that imparts patentable weight and we invited the parties to
further brief the issue during trial, if they so desired. Id. at 11.
Turning to the layer limitations, we found that, contrary to Patent
Owner’s argument, Petitioner’s claim construction properly accounted for
the four different layers recited in claim 1. Id. at 11–12. We declined to
construe the layer terms further, and invited the parties to further brief the
issue during trial, if they so desired. Id. at 12–13.
In its trial briefing, Patent Owner further addresses both claim
construction issues, arguing that claim 1’s preamble is a limitation and
proposing its own construction for the term “layer.” Resp. 25–38, 39–47;
Sur-reply 3–11. Patent Owner also proposes that we construe the term
“cooling rate.” Resp. 39. Petitioner also addresses both claim construction
issues we invited the parties to address in its Reply. Reply 2–10. For
purposes of this decision, only the following claim terms merit discussion:
(1) claim 1’s preamble, and (2) “layer.” See Nidec, 868 F.3d at 1017.
1. Claim 1 preamble
Claim 1’s preamble recites “[a] coated steel stamped product.”
Ex. 1001, 15:21. In the Institution Decision, after reviewing the claim
language, Specification, and remaining preliminary record, we did not “find
‘clear reliance’ on the preamble in the prosecution history [of the challenged
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patent], or that the preamble provides antecedent basis for the body of the
claim.” DI 10. Rather, it appeared that the preamble recited the purpose of
the invention. Id. We further found that the preamble language “stamped
product” appeared to be “a process limitation that does not impart patentable
weight to the claim unless the resulting product (i.e., the claimed product)
has ‘structural and functional differences that distinguish the claimed
product from the prior art.” Id. at 10–11 (citations omitted). We invited the
parties to further address whether “stamped product” was a process
limitation. Id. at 11.
Patent Owner argues that the phrase “coated steel stamped product” is
not a statement of purpose or intended field of use because “the recited
layers are not merely intended to be stamped, they are stamped, and the
specification makes this clear.” Resp. 40. Patent Owner further argues that
“[t]he modifier ‘stamped’ in ‘stamped product’ imports a structural feature
to [the] product and gives life to the claim by telling the reader what it is: not
any product, but a stamped product.” Id.; see Sur-reply 10–11.
Patent Owner first directs us to the preamble language itself as
support for its position that the claim is limited to a “stamped product.”
Resp. 41–42. Specifically, Patent Owner asserts that the inventors chose the
phrase “coated steel stamped product” “because it recites essential structure
and gives life, meaning, and vitality to the claim.” Id. at 41–42.
Turning next to the Specification, Patent Owner contends the
Specification “makes clear the importance that the claimed product is a
‘stamped product’” because the Specification “describes stamped products
and how to make them in numerous examples, thus evidences that it is an
important characteristic of the claimed invention.” Id. at 43. Patent Owner
identifies a number of instances in which the Specification uses the term
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“stamped product” as support for Patent Owner’s argument that the
preamble language is an important characteristic of the claimed invention.
Id. at 43–44 (citing Ex. 1001, 3:32–41, 3:57–4:10, 6:14–30, 7:52–54, 9:9–
11, 12:23–24, 12:54–13:7, 14:50–15:16; see also id. at 42 (citing Poly-Am.,
L.P. v. GSE Lining Tech., Inc., 383 F.3d 1303, 1310 (Fed. Cir. 2004) for the
proposition that repeated references in the Specification to the preamble to
describe the invention indicates that the preamble is a limitation).
Petitioner argues that the preamble is not limiting because claim 1
does not include any references for which the preamble provides antecedent
basis, a fact that Dr. DeArdo admitted during cross-examination. Reply 2
(citing Ex. 1052, 126:9–16). Petitioner further notes, for the claims that
mention the “product” at all, the bodies of those claims “omit any reference
to ‘stamped,’ despite [Patent Owner] calling-out its importance.” Id. (citing
Ex. 1001, claim 8). Petitioner also asserts Patent Owner’s “argument that
‘stamped’ adds ‘a structural feature’ to the claimed product . . . lacks
evidentiary support” because Patent Owner “fails to identify any specific
structural feature that is imparted by stamping.” Id. at 3 (citing Resp. 40).
In fact, Petitioner argues, the Specification attributes the four-layer structure
formation to an alloying reaction occurring during the heat treatment that
immediately precedes hot stamping. Id. (citing Ex. 1001, 14:62–67). And
Petitioner contends that the preamble in this case is different from the
preamble at issue in Poly-America because “the preamble’s recitation of
‘coated steel stamped product’ is ‘entirely conventional apart from the
alleged improvement in the body of the claims.’” Id. at 3–4 (quoting Arctic
Cat Inc. v. GEP Power Prod., Inc., 919 F.3d 1320, 1329–30 (Fed. Cir.
2019)).
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“[A]s a general rule, preamble language is not treated as limiting.”
Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1347 (Fed.
Cir. 2012) (citing Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336,
1346 (Fed. Cir. 2002)); see Catalina Mktg. Int’l, Inc. v. Coolsavings.com,
Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (“A preamble generally is not
limiting when the claim body describes a structurally complete invention
such that deletion of the preamble phrase does not affect the structure or
steps of the claimed invention.”). On the other hand, “a preamble limits the
invention if it recites essential structure or steps, or if it is ‘necessary to give
life, meaning, and vitality’ to the claim.” Catalina, 289 F.3d at 808
(quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305
(Fed. Cir. 1999)). “Whether to treat a preamble term as a claim limitation is
determined on the facts of each case in light of the claim as a whole and the
invention described in the patent.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618
F.3d 1354, 1358 (Fed. Cir. 2010) (internal quotation marks omitted).
After having reviewed claim 1, the Specification, and the prosecution
history, we determine that claim 1’s preamble is not limiting. First, we note
that the preamble does not provide antecedent basis for the body of claim 1.
Rather, claim 1’s body recites a structurally complete invention—a strip of
base steel with two sides and a coating on a least one of the two sides that
results from the interdiffusion between the base steel and aluminum or
aluminum alloy pre-coating, whereby the coating comprises four layers ((a),
(b), (c), (d)) proceeding from the base steel outwards, has a thickness greater
than 30 micrometers, and has a layer (a) thickness less than 15 micrometers.
Ex. 1001, 15:21–39. And although Patent Owner argues that the preamble
“recites essential structure and gives life, meaning, and vitality to the claim,”
as we found in the Institution Decision, Patent Owner’s argument on that
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point appears to be circular. See, e.g., Resp. 40 (“The modifier ‘stamped’ in
‘stamped product’ imports a structural feature to product and gives life to the
claim by telling the reader what it is: not any product, but a stamped
product.”), 40–41 (“The term ‘stamped’ in ‘coated steel stamped product’
thus recites an essential structure of the claimed product—it is stamped.”);
DI 9–10. As discussed below, Patent Owner has not identified any structural
feature that differentiates a stamped versus unstamped steel product; as such,
it is difficult to see how the term “stamped” adds “essential structure” to the
otherwise structurally complete claimed invention.
Second, although Patent Owner identifies instances in which the
Specification describes stamped products, Resp. 43–45, the preamble
appears to be “entirely conventional apart from the alleged improvement in
the body of the claims.” Arctic Cat, 919 F.3d at 1329–30. Here, the
Specification’s Background of The Invention section explains that pre-
coated stamped steel products were conventional. Ex. 1001, 1:40–41 (“In
recent years the use of pre-coated steels in hot-stamping processes for the
shaping of parts has become important.”), 1:42–2:1 (describing the known
steps for fabricating stamped parts and associated drawbacks, including
roller fouling). Contrary to Patent Owner’s arguments about the importance
of stamping to the invention, the Specification describes partially pre-
coating the base steel on at least one side with aluminum or an aluminum
alloy such that the pre-coating “has a defined thickness and is substantially
uniform” and a certain succession of coating layers that form during an
alloying reaction, proceeding from the steel substrate outwards, as important
aspects of the invention. See, e.g., id. at 2:38–47 (Summary of Invention),
4:19–25, 4:47–50 (explaining that “[i]n relation to the problem of fouling of
rollers, the control of the pre-coating thickness on the side of the sheet or
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blank which is directly in contact with the rollers is especially important”),
4:57–63 (“control of the homogeneity of the pre-coating thickness over the
entire sheet within given tolerances is an important factor for obtaining the
desired degree of intermetallic alloying, allowing one to improve the
resistance to the subsequent melting of the coating during travel on rollers”),
6:14–30. Thus, the Specification indicates that it is the thickness of the
partial pre-coating and succession of coating layers on the steel that are
important characteristics of the claimed invention (i.e., the recitations in
claim 1’s body), and not the “stamped product” prepared from the steel. As
a result, claim 1’s preamble is different from the preamble at issue in Poly-
America, upon which Patent Owner relies, because the preamble language in
Poly-America “represented an important characteristic of the claimed
invention,” whereas claim 1’s preamble does not. 383 F.3d at 1310 (“The
specification is replete with references to the invention as a ‘blown-film
liner, including the title of the patent itself, and the ‘Summary of the
Invention.’”).
Even if we were to determine that the body of claim 1 does not define
a structurally complete invention, we would nevertheless find that the
preamble language “stamped product” is a product-by-process limitation that
does not impart patentable weight to the claim. Greenliant Sys., Inc. v.
Xicor LLC, 692 F.3d 1261, 1268 (Fed. Cir. 2012) (explaining that “the
process by which a product is made is irrelevant[,]” unless the process
“imparts ‘structural and functional differences’” that distinguish the product
from the prior art); In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (“The
patentability of a product does not depend on its method of production.”).
Patent Owner argues that “stamped” denotes a structural limitation for the
same reasons that “stamped product” is not an intended use. Resp. 46
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(referring back to arguments that the preamble is a limitation). However, as
Petitioner points out, Patent Owner does not identify any structural feature
that stamping imparts. Reply 3; see also Tr. 36:10–12 (Judge Crumbley: . . .
“When looking at a set of layers, is there anything intrinsic about them that
tells us whether they are a result of stamping or not?” Patent Owner’s
Counsel: “I don’t think so.”). Nor are we aware of any structural
characteristic of the coated steel that the Specification ties to stamping.
Indeed, Figure 2 of the ’683 patent illustrates a coated stamped steel product
that does not correspond to the invention. Ex. 1001, 3:63–65. And the
Specification attributes the recited four-layer structure to an alliation (i.e.,
alloying) reaction that occurs “during the heat treatment immediately
preceding hot stamping.” Ex. 1001, 14:59–67; see id. at 6:14–22 (“the
thermal treatment causes an alloying reaction with the steel substrate which
modifies both the physico-chemical nature and the geometry of the pre-
coating”). Dr. DeArdo’s testimony that “changes occur after stamping” does
not persuade us otherwise because it is speculative. Ex. 2010 ¶¶ 151–156
(testifying about how the coating “could” change). Accordingly, the process
limitation “stamped” has no patentable weight. See Greenliant, 692 F.3d at
1268.
Nevertheless, as we explain below, even if we conclude that the
preamble is limiting, Petitioner establishes that Cornette teaches a stamped
product. See infra § II.E.1.
2. “Layer”
Claim 1 requires that the coating “comprises, proceeding from the
base steel outwards: (a) an Interdiffusion layer, (b) an Intermediate layer,
(c) an Intermetallic layer, and (d) a Superficial layer.” Ex. 1001, 15:31–36.
Petitioner proposes that we construe the terms “interdiffusion,” “an
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Interdiffusion layer,” “an Intermediate layer,” “an Intermetallic layer,” and
“a Superficial layer.” Pet. 20–24. In the Institution Decision, we
determined that Petitioner properly accounts for “the different layers” recited
in claim 1, but we declined to construe the layer terms further. DI 12–13.
We also invited the parties to brief the issue further during trial.
Patent Owner does not provide any constructions for the terms
“Interdiffusion,” “Intermediate,” “Intermetallic,” or “Superficial” that
modify the word “layer.” Rather, Patent Owner argues that we should
construe the term “layer” as “a material spread over the base steel different
from other materials spread over the base steel.” Resp. 28, 31.10 According
to Patent Owner, its construction is consistent with the ordinary and
customary meaning of “layer” to a person of ordinary skill in the art. Id. at
31 (citing Ex. 2008, 409, a dictionary defining “layer” as “a thickness of
some material laid on or spread over a surface”). Patent Owner also asserts
that its construction “is consistent with the manner in which the term is used
in the claims, specification, and prosecution history” of the ’683 patent. Id.
Referring first to the claims, Patent Owner asserts that claim 1 “labels
each layer sequentially” and with a different name, signifying “that each
layer is a different material spread over the base steel.” Id. at 32 (citing
Ex. 2010 ¶ 59); see Sur-reply 4. Patent Owner also argues that claim 2
contemplates the simultaneous presence of layers (c) and (d), and that

10 Patent Owner’s counsel clarified at oral argument that when the proposed
construction refers to “a material” “different from other materials,” it means
“different main compositions across each material.” Tr. 26:1–3. That is, the
layers all contain the same materials, i.e., iron, aluminum, and silicon, but
that the percentages of those materials have to be different in each layer. Id.
at 26:6–10.
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simultaneous presence is only possible when layers (c) and (d) are different
materials. Id. at 32–33 (citing Ex. 2010 ¶¶ 57–58); see Sur-reply 5.
Turning next to the Specification, Patent Owner explains that the
Specification also uses different names for the four layers, which again
indicates that the materials of each layer are different. Id. at 33 (citing
Ex. 1001, 3:56–62, 6:14–64, 12:57–13:7; Ex. 2010 ¶ 59). Patent Owner also
points to Figure 1 as showing the simultaneous presence of the Superficial
and Intermetallic layers at the extreme surface of the product. Id. at 34
(citing Ex. 1001, Fig. 1). Patent Owner then refers to Example 2 of the
Specification, asserting that “the mean compositions of the materials” are
different for the four layers and that an ordinarily skilled artisan would
understand this to mean that “each of these four layers is of a different
material.” Id. at 34–35. Finally, Patent Owner discusses Figure 2 of the
patent, explaining that the intermetallic layer in that figure is “separated and
at different levels in the coating,” yet “referred to as one layer, not multiple
layers.” Id. at 37.
Patent Owner also discusses the ’683 patent’s prosecution history,
noting that the Examiner relied on a reference that “describes ‘a multi-layer
structure such as a five-layer structure having five layers of different alloy
compositions.” Id. at 38. According to Patent Owner, because the
Examiner relied on this disclosure, “the Examiner understood that different
layers in the succession of layers must be different materials.” Id. (citing
Ex. 1002, 141;11 Ex. 2002 ¶ 24).
Petitioner responds that there is no basis in the claims, the
Specification, or the prosecution history for importing a “different from

11 We cite to the pages that Petitioner added to the exhibit.
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other materials” requirement into the term “layer.” Reply 4–8. Beginning
with the claims, Petitioner argues that none of the claims recites any
compositional requirements for the layers and that claim 1, instead, recites
positional requirements for the four claimed layers and certain thicknesses
for the coating and layer (a). Id. at 4 (citing Ex. 1001, claim 1). Petitioner
further contends that Patent Owner’s reliance on claim 2 to support a
“different from other materials requirement” fails because claim 2 does not
require the “simultaneous presence of layers (c) and (d)” at the extreme
surface, as “0% of layer (c) could be present.” Id. at 5. And Petitioner notes
that the ’683 patent does not assign any importance to the layer names
because it specifies that the “first layer can be referred to as the
“[i]nterdiffusion layer or intermetallic layer,” even though the third layer
is also called intermetallic layer. Id. at 7.
As for Patent Owner’s arguments regarding the Specification,
Petitioner asserts that Patent Owner improperly reads mean compositions
from one embodiment (i.e., Example 2) into the claims, while excluding the
compositions the preferred embodiment describes. Id. at 5–6. Petitioner
further argues that Example 2 falls outside the scope of claim 1 because it
does not satisfy the thickness requirements for the interdiffusion layer (layer
(a)). Id. at 6 (citing Ex. 1001, 12:60–62, claim 1).
Petitioner also contends that Patent Owner “mischaracterizes the
prosecution history” because “the Examiner understood the claims as
requiring only ‘the presence of the four claimed layers’ and made no
statements reflecting a compositional-distinctness of those layers.” Id. at 8
(quoting Ex. 1002, 141–142).
Finally, Petitioner argues that if the term “layer” requires
construction, we should construe the term in accordance with its plain and
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ordinary meaning to mean any of four dictionary definitions. Id. at 9 (citing
Exs. 1053–1055; 1057).
Based upon the dictionary definitions that the parties cite, the parties
agree that a “layer” is “a thickness of material” and that the layer “spread[s]
out,” “spread[s] over” or “covers” a surface. See, e.g., Ex. 1053, 623 (one of
Petitioner’s proffered dictionaries defining “layer” as a “single thickness,
coating, or stratum spread out or covering a surface”), Ex. 2008, 409 (Patent
Owner’s proffered dictionary defining “layer” as “a thickness of some
material laid on or spread over a surface”). Thus, the only dispute for us to
resolve is whether the term “layer” additionally requires that each material is
different from all the other materials, as Patent Owner argues. We
determine that it does not.
We begin with the claim language. We acknowledge that claim 1
refers to each layer by a different name, but we agree with Petitioner that
nothing in either the layer names or the remaining claim language requires
different mean compositions of the materials in each layer. Instead, two of
the layer names recite positional requirements, i.e., Intermediate layer and
Superficial layer, and two recite characteristics of the layer, i.e.,
Interdiffusion layer and Intermetallic layer. Ex. 1001, claim 1. Further,
although claim 2 encompasses embodiments in which layer (c) and layer (d)
can both be present at the extreme surface of the product, it does not require
that layer (c) and layer (d) both be present at that surface. Instead, claim 2
includes a product in which none of layer (c) may be present at the extreme
surface. Id. at claim 2 (reciting, “wherein less than 10% of layer (c) is
present at an extreme surface of the product,” which includes 0%). Thus,
the claim language does not support Patent Owner’s proposed construction.
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We next consider the Specification. The Specification explains that
all four layers contain iron, aluminum, and silicon. Id. at 6:31–53. As we
explained in the Institution Decision, the Specification describes “a preferred
embodiment” in which the Intermediate layer and the Superficial layer have
the same ranges of iron, aluminum, and silicon and, therefore, can contain
the same amounts of each of the elements that make up the layer. Id.
(disclosing that “(b) Intermediate layer” “[i]n a preferred embodiment . . .
has the following composition, by weight 39-47% Fe, 53-61% Al, 0-2% Si”
and that “(d) Superficial layer” “[i]n a preferred embodiment . . . has the
following composition, by weight: 39-47% Fe, 53-61% Al, 0-2% Si”);12 see
DI 26–27. Patent Owner’s proposed construction, which requires different
mean compositions (i.e., different materials) for each layer, would exclude at
least some of the compositions encompassed by the preferred embodiment,
and a claim construction that excludes the preferred embodiment “is rarely,
if ever, correct.” InterDigital Commc’ns, LLC v. Int’l Trade Comm’n, 690
F.3d 1318, 1325 (Fed. Cir. 2012) (quoting Pfizer, Inc. v. Teva Pharm., USA,
Inc., 429 F.3d 1364, 1374 (Fed. Cir. 2005)).13

12 Although Dr. DeArdo testified on cross-examination that “each layer is
going to have its own composition,” Ex. 1052, 101:22–23, when further
asked whether diffusion as described in the ’683 patent will automatically
result in every layer being different, Dr. DeArdo responded “I can’t answer
what it would look like. It’s pure speculation.” Id. at 102:3–10.
13 As we explain above, Patent Owner relies on Example 2 as supporting an
interpretation that requires different mean compositions of material for each
layer. But we agree with Petitioner that Example 2 is outside the scope of
claim 1 because it contains an Interdiffusion layer (layer (a)) that is 17
micrometers thick, whereas claim 1 requires “a thickness less than 15
micrometers” for the Interdiffusion layer. Reply 6; compare Ex. 1001,
12:60–62, with id. at claim 1. Even if we consider Example 2, however, we
decline to adopt Patent Owner’s construction because it improperly imports
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We also consider the prosecution history. The Examiner found that
the prior art discloses “an aluminum-coated structural member” having “[a]
multi-layer structure . . . [that] is advantageous for maintaining good contact
with a welding gun in spot welding even under great pressure for high
tension material.” Ex. 1002, 140. The Examiner further found that the prior
art process “appears to be identical or substantially identical to the process
set forth in the specification of the instant application, which produces the
claimed product.” Id. at 141. The Examiner concluded, “absent a showing
to the contrary, it appears that the properties of the product in the prior art
necessarily or inherently possesses the characteristics of the claimed
product, including the presence of the four claimed layers.” Id. at 141–142.
The Examiner, however, did not rely on the prior art reference “for
disclosing ‘five layers of different alloy compositions,” as Patent Owner
argues. See id. at 140–142. Thus, the prosecution history does not support
interpreting the term “layer” to require different mean compositions or
different materials.
Based on our review of the claim language, the Specification, and the
prosecution history, we conclude that the term “layer” means “a thickness of
material spread over or covering a surface.”
Petitioner also argues that we should “construe ‘interdiffusion,’ ‘an
Interdiffusion layer,’ ‘an Intermediate layer,’ ‘an Intermetallic layer,’ and
‘a[] Superficial layer’ as requested in the Petition.” Reply 10. Petitioner
acknowledges, however, that Dr. DeArdo provided meanings for each of the
terms modifying “layer” that “align with Petitioner’s constructions.” Id.

a limitation from the Specification. See Cont’l Circuits LLC v. Intel Corp.,
915 F.3d 788, 797 (Fed. Cir. 2019).
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(citing Ex. 1052, 107:8–109:23). Further, the parties’ dispute does not
center on whether the prior art discloses the terms modifying “layer.” Thus,
we need not construe those terms. See Nidec, 868 F.3d at 1017.
D. Asserted Prior Art
Before considering the asserted grounds of unpatentability, we
provide a brief overview of the asserted references.
1. Cornette (Ex. 1004)14
Cornette relates to, inter alia, pre-coated boron steel for use in the
automotive industry. Ex. 1004, Abstract, 9. Cornette states “significant
progress has been made concerning safety, fuel economy, dent resistance,
and comfort” in the automotive industry. Id. at 3. “To achieve these goals, a
variety of steels are being used in the vehicles.” Id. Lighter cars are better
for fuel economy and the environment, but safety and comfort
considerations require additional equipment that contradicts the pursuit of
lighter weight vehicles. Id. To help achieve the automotive industry goals,
Cornette discloses a range of high and ultra-high strength steels, including
pre-coated boron steel (USIBOR). Id. at 3, 9. The pre-coated steel has
excellent material properties after the press hardening process (i.e.,
stamping) with good corrosion protection. Id. at 9. Cornette’s Figure 21
discloses a process for hot forming the pre-coated steel, which we reproduce
below.

14 We cite to the page numbers that Petitioner added to the reference.
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Figure 21 depicts the process used for hot forming the pre-coated steel.
“The coating, made of aluminum and silicon, is applied with a hot dipped
process.” Id. Heating the pre-coated steel, generally to 900°C for five
minutes, creates an alloying reaction between the iron substrate and the
aluminum-silicon coating that results in “a hard multiphase alloy layer.” Id.
Cornette explains that the Fe-Al-Si layer is typically about 40 µm at the steel
surface and provides a photo, Figure 22, showing a section view of the
coating after heat treatment, as reproduced below.
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Figure 22 is a section view of the coating after heat treatment. Id. at 10.
Cornette further discloses that the pre-coated steel can be used to
obtain complex parts through “hot stamping” that have high mechanical
characteristics and are lighter. Ex. 1004, 11.
2. Laurent (Ex. 1008)
Laurent relates to a coated, hot- and cold-rolled steel sheet comprising
a very high resistance after thermal treatment. Ex. 1008, 1:6–8. Laurent
discloses compositions of boron steels that include an aluminum-based
coating. See, e.g., id. at 1:47–64, 2:40–45. Laurent explains that the coating
protects the sheet against hot and cold corrosion and that the mechanical
characteristics of the sheet “allow a great variety of shaping, in particular a
deep stamping.” Id. at 2:46–56. “At the time of thermal treatment
performed on a finished casting or at the time of a hot-shaping process, the
coating forms a layer having a substantial resistance to abrasion, wear,
fatigue, shock,” “good resistance to corrosion,” and “good capacity for
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painting and gluing.” Id. at 2:57–61. In an “example of implementation,”
Laurent discloses a coating “about 20 µm in thickness.” Id. at 3:37–43.
3. EP Laurent (Ex. 1012)
EP Laurent relates to “a process for manufacturing a part from a strip
of hot-rolled sheet steel.” Ex. 1012 ¶ 1. EP Laurent “also concerns a hot-
rolled sheet comprising a metal or metal alloy coating deposited on the
surface, for the hot manufacture of an intermetallic compound” that
provides, among other things “protection against corrosion, a barrier against
decarburation of the steel sheet, lubrication upon hot forming of the sheet,
and on the finished part . . . a high degree of mechanical hardness of the steel
and a high degree of superficial hardness” of the finished part’s surface. Id.
¶ 6. EP Laurent discloses an aluminum-based coating having a thickness of
“5 µm to 100 µm, preferably between 10 µm and 25 µm” before thermal
treatment. Id. ¶ 11.
4. FR Laurent (Ex. 1010)15
FR Laurent relates to a process for making a part, such as an
automotive vehicle wheel, using a hot forming (i.e., hot stamping) method
on a pre-coated steel sheet that is hot-rolled for thermal treatment. Ex. 1010,
1:1–2, 2:6–9. The coating is aluminum-based and the sheet is coated with a
layer about 25 µm thick before thermal treatment. Id. at 5:4–5. The sheet-
metal blank is heated in a furnace at a temperature between 750°C and
1000°C for a time that varies depending on thickness. Id. at 5:6–8. During
heating of the sheet-metal blank, the coating alloys with the steel substrate to
form an intermetallic alloy. Id. at 5:12–13. “By interdiffusion, the alloying

15 For clarity, we add line numbers when citing to this reference.
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leads to an increase of the thickness of the [coating] layer” that “corresponds
to a 50% increase.” Id. at 5:13–15.
5. Nishibata (Ex. 1007)16
Nishibata relates to hot formed members, such as automobile body
parts, and methods of manufacturing the parts using hot forming, i.e., hot
stamping or pressing. Ex. 1007, 1:1–4. Nishibata discloses a coated steel
part prepared from a base steel with an aluminum alloy pre-coating. Id. at
5:11–12. Nishibata further discloses several working examples of steel
sheets with a sulfur content of 0.001 to 0.004 mass percent. Id. at 8
(Table 1).
6. Somani (Ex. 1005)
Somani investigates the influences of high temperature plastic
deformation and applied stress on the martensitic transformation in a boron
steel during the forming and quenching processes. Ex. 1005, Abstract, 362.
Somani explains that “[t]he presence of ferrite would evidently mean poorer
strength properties of the steel.” Id. at 366. According to Somani, “several
variables, such as the temperature at the moment of deformation, the amount
of plastic strain and the cooling rate, are of importance and need to be
optimised and controlled” to minimize ferrite formation. Id. Somani finds
that “even a cooling rate as high as 280°C/s was unable to prevent a tiny
fraction of ferrite to be formed, though only after the relatively high strain of
0.24.” Id. In the hot stamping process, “[t]ypical cooling rates of the order
of 100°C/s have been estimated. . . . This is lower than the maximum rate of
280°C/s used in the tests, still resulting in the formation of some ferrite.”

16 We use the page numbers provided in the translation. For clarity, we add
line numbers when citing to this reference.
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Id.; see also id. at 363 (Figures 3 and 4, depicting flow stress under
continuous compression in various temperature regimes during cooling at
50°C/s and relative diametric changes of the specimens in the course of
cooling, respectively).
7. Engels (Ex. 1041)
Engels relates to hot stamping boron-alloyed steels and discloses a
boron steel coated with an aluminum alloy. Ex. 1041, 136, 142–143, Fig. 5.
Figure 5 depicts “a cross-section polish of the diffusion layer of a hot-dip
aluminum coated boron steel. Five phases which differ in their layer
thickness and chemical composition can easily be distinguished.” Id. at
142–143, Fig. 5.
E. Anticipation by Cornette
Petitioner contends that Cornette anticipates claims 1 and 2 of the
’683 patent. Pet. 24–42.
1. Claim 1
Petitioner asserts that Cornette discloses each element of claim 1, and
supports its analysis with citations to Cornette and Dr. Miles’s testimony.
(citing Ex. 1003 ¶¶ 68, 71, 73, 76–77, 84, 88–89, 91–96, 98, 101, 107, 108;
Ex. 1004, 3, 9–11, Figs. 21, 22). Patent Owner disagrees, arguing that
Petitioner’s ground fails for two reasons: (1) Cornette does not disclose a
“stamped product,” and (2) Cornette does not disclose a coating with four
different materials spread out over a steel sheet. Resp. 52–61 (citing
Ex. 1004, 9–10; Ex. 1013, 9–11; Ex. 2001 ¶¶ 35–36, 47, 52, 54, 56, 77–89).
We first address the disputed limitations and then turn to the remaining
limitations of claim 1, which Patent Owner does not contest separately. See
generally Resp.
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a) Preamble - “A coated steel stamped product, which
comprises:”
As we explain above, we determine that claim 1’s preamble is not a
limitation on the scope of the claim. Thus, Petitioner need not establish that
Cornette discloses a stamped product. Nevertheless, we address the parties’
arguments as to whether Cornette discloses a stamped product.
Petitioner argues, to the extent claim 1’s preamble is a limitation,
Cornette discloses a coated steel stamped product. Pet. 25; see also
Ex. 1003 ¶ 66. In particular, Petitioner points to Cornette’s disclosure of
pre-coated boron steel for hot forming that “can be used to ‘obtain complex
parts by hot stamping.’” Id. (citing Ex. 1004, 3, 9 and quoting Ex. 1004,
11). Petitioner also directs us to Figure 21, which Petitioner annotates, as
depicted below.

Figure 21 illustrates Cornette’s process for hot forming the pre-coated steel,
with Petitioner’s annotation showing the “coated steel stamped product.” Id.
The pre-coated USIBOR 1500 steel product includes a coating (purple) on
either side of the base steel (grey), and is hot formed via stamping and
quenched/cooled in a die (blue). Id. at 26; Ex. 1003 ¶¶ 67–68. Petitioner
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also relies on Cornette’s Figure 22, which depicts “a section view of the
coating after heat treatment,” to show the layer limitations of claim 1, as
well as a stamped product (to the extent that the claim requires a stamped
product). Pet. 33–36; Reply 11–19.
Patent Owner responds that the preamble is limiting and requires a
stamped product. See supra § II.C.1 (addressing Patent Owner’s claim
construction arguments). Patent Owner argues that Petitioner’s
unpatentability analysis “relies on the premise that figure 22 of Cornette
shows a stamped product with a four layer structure,” but “Figure 22 is not
an image of a stamped product, and . . . cannot be used to establish the layers
of a stamped product.” Resp. 57 (citing Ex. 2010 ¶¶ 76, 77, 143); see id. at
58 (arguing that Cornette draws a distinction between “‘heat treatment’ on
the one hand, and ‘hot forming’ or ‘hot stamping’ on the other”).
Patent Owner also directs us to the Vaissiere17 reference, which Patent
Owner contends bolsters its position that Cornette’s Figure 22 is not
stamped. Id. at 58. Specifically, Patent Owner explains that Vaissiere’s
Figure 15 and Cornette’s Figure 22 “are the same images and are both
captioned as heat treated coated steel.” Id. at 59 (citing Ex. 1033, 7;
Ex. 1013, 10; Ex. 2010 ¶ 86). Patent Owner continues that “[i]t is even
more evident in Vaissiere’s figure 15 that the image of the coating is not
related to stamping because figure 15 is specifically relied on to show the
‘high roughness level of the alloyed layer’ for the adherence of paint, not
what any purported levels of the coating look like after stamping.” Id.

17 L. Vaissiere et al., Development of Pre-Coated Boron Steel For
Applications on PSA Peugeot Citroën and RENAULT Bodies in White,
reprinted from Proceedings of the 2002 SAE Int’l Body Eng’g Conference &
Auto. & Transportation Tech. Conference (2002) (Ex. 1033).
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(citing Ex. 1033, 7; Ex. 2010 ¶ 87). Thus, Patent Owner concludes that
Cornette and Vaissiere “mak[e] it clear that the coating is not stamped.” Id.;
see also Sur-reply 12–14 (arguing that Cornette’s Figure 22 is heat treated,
not stamped).
Patent Owner discounts Petitioner’s reliance on other sections of
Cornette that describe stamping, e.g., Figure 21, because those sections
“only . . . reinforce the difference between a part that has been subjected to
‘heat treatment’ . . . [such as is shown in Figure 22] and the subsequent step
of stamping. . . .” Id.; see also Sur-reply 16–17 (similarly arguing that
references to “good quenchability” in Vaissiere or to “stamping” in Cornette
do not mean that the figures show stamped specimens). According to Patent
Owner, because Figure 22 depicts a coating before stamping, “it cannot
disclose anything about the coating and thickness after stamping.” Id.
(citing Ex. 2001 ¶¶ 148–158). And Patent Owner argues that “[f]rom the
time a coated steel blank is heat treated to the time that it is stamped and
quenched/cooled the structure of the compounds of the layers could change,
resulting in possible changes to the number layers and possible changes to
the thicknesses of the layers.” Id. at 59–61 (citing Ex. 2010 ¶¶ 152–158).
Petitioner replies that, if “stamped” is a limitation, “Cornette still
anticipates.” Reply 11. According to Petitioner, “it is clear that Cornette
discloses a stamped product in Figure 22” for at least two reasons:
(1) Cornette’s heat treatment is a “multi-stage process from heating to
cooling” that includes stamping; and (2) contextual indicia in Cornette and
Vaissiere “confirm that Figure 22 shows a stamped product.” Id. at 11.
As to the heat treatment process, Petitioner points to a statement in
Vaissiere, “good quenchability of parts during heat treatment (critical
quenching speed: 27 C/s)” and contends the statement demonstrates that
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Cornette’s heat treatment includes a quenching step, which occurs with or
after hot-stamping. Id. at 12 (quoting Ex. 1033, 4 and citing Ex. 1004, 9
(Figure 21)). For contextual indicia, Petitioner explains that Vaissiere’s
Figure 15 (which is the same as Cornette’s Figure 22) has a caption noting
“that the depicted specimen has a cataphoresis layer” and argues that a
cataphoresis layer is applied to a stamped part prior to painting. Id. at 13–14
(citing Ex. 1033, 7; Ex. 1051 ¶ 8; Ex. 1052, 142:2–8). Petitioner also notes
that Cornette “mentions ‘[m]aterial after cataphoretic paint’ and identifies
that cataphoretic paint as ‘PPG 742/962,’ which is ‘15 to 20 microns’ . . .
and measurable in Cornette’s Figure 22.” Id. at 14 (citing Ex. 1004 10–11;
Ex. 1051 ¶ 9). And Petitioner asserts that Cornette’s Figure 22 “is presented
in the context of improved safety parts for automobiles, i.e., finished
automobile parts after stamping.” Id. at 15 (citing Ex. 1004, 1, 3, 9–10).
According to Petitioner, the context in Cornette’s text “shows that Figure 22
is included in Cornette as part of a broader demonstration of USIBOR
1500’s [i.e., the steel’s] suitability for automobile parts,” as Cornette’s
discussion of “advantageous ‘mechanical characteristics,’ ‘spot weldability,’
and ‘corrosion resistance’ properties” evidence. Id. at 15–16.
As we explain above, we do not determine that the preamble language
“stamped” is a limitation, therefore, the question of whether Cornette
discloses a stamped product has no bearing on the question of anticipation.
Even if we were to determine that it is a limitation, however, Petitioner
shows that Cornette discloses a coated steel stamped product. First, we note
that many of Patent Owner’s arguments to the contrary are based on the
premise that Petitioner relies only on Cornette’s Figure 22 for disclosing a
coated stamped product. Petitioner, however, relies on Cornette’s entire
disclosure, which describes using the pre-coated steel to make complex parts
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through “hot stamping.” Ex. 1004, 11; Pet. 25–26. Petitioner also relies on
Cornette’s Figure 21, which sets forth the process for hot forming the pre-
coated steel that includes stamping and quenching in a die. Id. at 25
(reproducing Fig. 21). Dr. Miles relies on these same disclosures in opining
that Cornette discloses a coated stamped product. Ex. 1003 ¶¶ 67–68. And
Patent Owner does not dispute that Cornette discloses a hot forming process,
which includes hot stamping. See Resp. 58 (agreeing that Figure 21 shows
hot forming and that Cornette discloses making complex parts by hot
stamping). Patent Owner’s arguments focus on Figure 22 because Petitioner
relies on Figure 22 as showing the four-layer structure recited in claim 1 and
Patent Owner contends that Figure 22, therefore, needs to disclose a stamped
four-layer product. Thus, we consider Figure 22.
Cornette discloses that Figure 22 depicts a coating surface “after heat
treatment.” Ex. 1004, 9, 10 (Figure 22 caption). The parties dispute
whether that “heat treatment” includes stamping. Resp. 58; Reply 11–13.
We conclude that it does. We acknowledge that Figure 22’s caption does
not provide further details about the depicted specimen or the meaning of
“heat treatment,” but we agree with Petitioner that one of ordinary skill in
the art would have understood the reference to “heat treatment” in Cornette
to mean the entire hot-forming process, which includes stamping, not just a
heating step. For example, the text immediately following Figure 22
contrasts the mechanical characteristics of the steel “[b]efore heat treatment”
with those after the hot forming process, i.e., those “obtained after
austenitization at 900°C during 5 minutes and cooling in the die.” Ex. 1004,
10. This disclosure indicates that Cornette uses the terms “hot forming” and
“heat treatment” to describe the same process, which includes stamping and
cooling in the die. Cornette also includes a section on Corrosion Resistance
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for the steel “[a]s quenched,” explaining that the pre-coated steel was “tested
after heat treatment.” Id. The disclosure of testing after heat treatment that
includes quenching also suggests that the heat treatment process Cornette
describes includes stamping because quenching follows stamping. Ex. 2010
¶ 32 (Dr. DeArdo’s testimony that “steel products with very high strength
. . . can be manufactured . . . by reheating and hot stamping the part,
followed by in-die quenching.”); Ex. 1003 ¶ 68 (Dr. Miles’s testimony that
Cornette’s Figure 21 shows a coated steel that is “hot formed via stamping
and quenched/cooled in a die”); Ex. 1052, 44:10–22 (Dr. DeArdo testifying
that in a hot forming process, the steel blank is heated to 20 degrees above
the forming temperature, then transported to the die where “it’s hot stamped
to the final shape” and “[t]he water circulating through the die quenches the
steel.”). Further, Dr. DeArdo testified on cross-examination that Cornette’s
use of “heat treatment” includes the steps of “heating to the die temperature,
heating to the forming temperature, holding, stamping, cooling.” Ex. 1052,
172:17–173:8; see also id. at 69:11–70:11 (Dr. DeArdo acknowledging that
the French (i.e., Cornette’s authors) use the term “heat treatment” to describe
the entire process of hot forming from the cold coated steel to stamping and
quenching even though he does not use the term “heat treatment” in the
same way). Thus, Dr. DeArdo admits that Cornette’s reference to “heat
treatment” includes stamping.
We also find Vaissiere supports Petitioner’s position that Cornette’s
Figure 22 shows a stamped product. The parties agree that Vaissiere’s
Figure 15 depicts the same image as Cornette’s Figure 22. See Resp. 59;
Reply 13. Vaissiere’s Figure 15 caption explains that the figure is a
“[s]ection of alloyed and cataphoresis layer.” Ex. 1033, 7 (Figure 15).
Dr. Miles testifies that a cataphoresis layer “is a corrosion-resistant layer
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applied to a stamped part prior to painting.” Ex. 1051 ¶¶ 8; see id. ¶¶ 9–10
(Dr. Miles’s testimony that Cornette’s Figure 22 shows a cataphoretic
paint/layer support with an annotated version of Cornette’s Figure 22
pointing to the cataphoretic layer). Dr. DeArdo agrees that a cataphoresis
layer or cataphoretic paint is applied after stamping. Ex. 1052, 141:21–
142:8. Because a cataphoresis layer is applied after stamping, the alloyed
and cataphoresis layer depicted in Vaissiere’s Figure 15 (which is the same
figure as Cornette’s Figure 22) is additional evidence that Cornette’s Figure
22 depicts a stamped product. Accordingly, assuming that “stamped” is a
limitation of claim 1, Petitioner establishes that Cornette discloses a
“stamped product.”
b) “wherein said coating comprises, proceeding from the base
steel outwards: (a) an Interdiffusion layer, (b) an
Intermediate layer, (c) an Intermetallic layer, and (d) a
Superficial layer,”
Petitioner asserts Cornette discloses the layer limitations of claim 1.
Pet. 32–36. Specifically, Petitioner points to Cornette’s Figure 22, which it
reproduces in the Petition alongside Figure 1 of the ’683 patent for
comparison. Id. at 33. We reproduce Petitioner’s annotated and combined
figure below.

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’683 patent Figure 1, depicted on the left, “illustrates a preferred
embodiment of an invention coated part, after heat treatment and stamping.”
Ex. 1001, 3:57–58. “The succession of layers of the coating on the steel
substrate is: (a) interdiffusion layer; (b) intermediate layer; (c) [i]ntermetallic
layer; and (d) superficial layer.” Id. at 3:58–61. Cornette’s Figure 22,
depicted on the right, is a photo of a section view of coating (i.e., multiphase
alloy layer) after heat treatment. Ex. 1004, 9. Petitioner asserts that, like
Figure 1 of the ’683 patent, Cornette’s Figure 22 “shows that the multiphase
alloy layer formed at the steel surface includes four distinct phases/layers”
that correspond to the claimed interdiffusion layer, intermediate layer,
intermetallic layer, and superficial layer.” Pet. 34 (citing Ex 1003 ¶ 88).
Petitioner acknowledges that the layers are not labeled in Cornette’s
Figure 22, but argues that a person of ordinary skill in the art would have
understood that Cornette’s layers correspond to the four claimed layers, as
the terms are used in the ’683 patent. Id. (citing Ex. 1003 ¶ 89); see also id.
at 34–35 (explaining that the ’683 patent depicts the steel substrate and
interdiffusion layer as “essentially the same color” and describes the
intermediate layer as “appearing darker,” the intermetallic layer as
“appearing as a pale phase,” and the superficial layer as the “Darker
superficial layer”). Petitioner contends that Cornette’s Figure 22 includes
the same four-layer structure and color scheme. Id. at 35 (citing Ex. 1003
¶¶ 91, 93), 36 (citing Ex. 1003 ¶¶ 93–94 and setting forth how Cornette
discloses that one of its layers is formed through interdiffusion and another
layer is composed of two or more metals, i.e., intermetallic); see also id. at
31–33 (explaining how Cornette discloses interdiffusion between the base
steel and the pre-coating).
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Patent Owner argues that Petitioner’s ground fails because “Cornette
does not disclose a coating with four different materials spread out over a
steel sheet.” Resp. 52. In particular, Patent Owner contends that Petitioner
fails to point to any support in Cornette that Figure 22 shows four different
materials. Id. (citing Ex. 2010 ¶¶ 121–127). Patent Owner also argues that
nothing in Cornette’s Figure 22 “would cause a [person of ordinary skill in
the art] to conclude that the purported intermediate and superficial layers are
different material. . . . Instead, the purported superficial and intermediate
layers in figure 22 actually appear to have the same shade and tone” and,
“consequently, appear to be and certainly could be of a same material and
not different.” Id. at 53–54 (citing Ex. 2010 ¶¶ 79–83, 128–131), 56.
According to Patent Owner, this “is in contradistinction to figure 1 and the
claims of the ’683 patent, where the four layers are specifically described in
the specification as different, having four different mean compositions and
four different names, and not on the basis of shade, tone or color . . . and
their location, but rather based on materials.” Id. at 54 (citing Ex. 1001,
12:58–13:7; Ex. 2010 ¶¶ 59, 83, 136, 138–139). Patent Owner continues
that without a compositional analysis an ordinarily skilled artisan would not
be able to determine that layers (b) and (d) are different materials and notes
that Petitioner failed to submit such a compositional analysis. Id. at 54–55;
see id. at 56 (further arguing that Dr. Miles’s analysis cannot show that the
layers are of different materials).
Having evaluated the evidence, we find that Cornette discloses the
recited four-layer structure. The majority of Patent Owner’s arguments are
based on its claim construction of the term “layer,”—i.e., as requiring
different materials—which we do not adopt. See supra § II.C.2. As we
explain above, the term “layer” means “a thickness of material spread over
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or covering a surface.” See id. Like Figure 1 of the ’683 patent, Cornette’s
Figure 22 shows four layers, as Petitioner’s side-by-side comparison of
Figure 1 and Figure 22 illustrates. Ex. 1004, 10 (showing four different
layers); see Pet. 33–36; (Dr. Miles’s testimony regarding the four-layer
structure in Cornette’s Figure 22). Although Cornette’s Figure 22 does not
label its layers, we credit Dr. Mile’s testimony that one of ordinary skill in
the art would have understood the four layers to correspond to the claimed
layers based on the materials in each layer, the process for producing the
coated steel product, the color scheme, and the arrangement of the layers.
Ex. 1003 ¶¶ 88–94. Indeed, Dr. DeArdo testified on cross-examination
(similar to Dr. Miles’s direct testimony) that the coloration in a micrograph
(e.g., the depiction in Figures 1 and 2 of the ’683 patent or Figure 22 of
Cornette) would give him an idea of the compositions for each colored band
in the figure. Ex. 1052, 86:15–87:17; see also id. at 87:18–88:8
(Dr. DeArdo describing the colored bands in Figure 2 of the ’683 patent, for
example, a “very light” interdiffusion layer and “very light” aluminum
intermetallic layers).
Patent Owner further argues that Petitioner “improperly relies on
figure 22 of Cornette in combination with figure 1 of the ’683 patent”
because Petitioner compares the two figures side-by-side in its analysis, but
the figures “are different and not properly comparable to each other.”
Resp. 48–49. Patent Owner identifies five alleged differences between the
two figures: (1) Figure 1 is of a stamped product, whereas Figure 22 is not;
(2) Cornette discloses that a pre-coated steel sheet “is heated for, ‘generally
900°C, 5 minutes,’” but “there is no indication that this temperature and time
. . . was used to arrive at Cornette’s figure 22 steel,” whereas Figure 1 of the
’683 patent “results from a specific heating rate and cooling rate”; (3) the
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Figure 1 specimen was etched, prepared or otherwise processed to reveal the
layers of the coating, whereas Cornette’s Figure 22 specimen was not;
(4) Figure 1 and Figure 22 are of different magnifications; and (5) the ’683
patent uses a compositional analysis to describe the four-layer structure in
Figure 1, whereas Cornette contains no compositional analysis. Id. at 49–50
(citing Ex. 2010 ¶¶ 44–47, 49–52, 54–56, 59, 75–90, 112–120, 143–157),
51–52 (similarly arguing that Petitioner improperly relies on the ’683
patent’s disclosed process to support its allegation of anticipation).
According to Patent Owner, “Petitioner’s comparison of the heat treated
blank of Cornette (Fig. 22) and layers within the coated stamped product of
the ’638 patent (figure 1) is a comparison of apples and oranges.” Id. at 50.
We do not agree that Petitioner’s comparison of Cornette’s Figure 22
to Figure 1 of the ’683 patent is improper. All of the differences Patent
Owner identifies are features that fall outside of the scope of claim 1.
Ex. 1001, 15:21–39; see supra § II.C.1 (discussing “stamping” in the
preamble); cf. supra § II.E1.a) (explaining that even if “stamping” is a
limitation, Cornette discloses a stamped product). To satisfy its burden in
establishing that Cornette discloses the four layer structure, Petitioner only
need establish that Cornette teaches a coating that comprises (from the base
steel outwards): an interdiffusion layer, an intermediate layer, an
intermetallic layer, and a superficial layer. Id. As we explain above,
Petitioner makes such a showing by comparing the two figures, as well as
explaining, with Dr. Miles’s credible testimony, why Cornette discloses the
four-layer structure. Accordingly, Petitioner establishes that Cornette
discloses a coating comprising, proceeding from the base steel outwards:
(a) an Interdiffusion layer, (b) an Intermediate layer, (c) an Intermetallic
layer, and (d) a Superficial layer.
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c) Remaining limitations
Petitioner explains how Cornette discloses the remaining limitations
of claim 1. For example, Petitioner explains that Cornette discloses “a strip
of base steel having a first side and a second side” and a coating on at least
one side of the base steel. Pet. 26–30 (citing Ex. 1004, 9–10, Figs. 21, 22;
Ex. 1003 ¶¶ 71, 73, 76; Ex. 1036). Petitioner also explains that Cornette
discloses that its multiphase alloy layer or coating “results from the
interdiffusion between the base steel and the aluminum or aluminum alloy
pre-coating.” Id. at 30–33 (citing Ex. 1004, 9, Fig. 21; Ex. 1003 ¶¶ 84, 86;
Ex. 1010). Petitioner further points to Cornette’s disclosure that “‘[h]eating
the pre-coated boron steel (generally 900°C, 5 minutes) creates an alloying
reaction between substrate (iron) and the coating (aluminum-silicon) which
leads to a hard multiphase alloy layer,’ which ‘is typically about 40 µm at
the steel surface’” as disclosing a coating thickness greater than
30 micrometers. Id. at 37 (quoting Ex. 1004, 9); see id. at 36, 38 (citing
Ex. 1004, 9–10, Fig. 22; Ex. 1003 ¶ 98). And Petitioner explains, with
citations to Cornette’s Figure 22, how Cornette discloses that layer (a), i.e.,
the interdiffusion layer, that has a thickness less than 15 micrometers. Id. at
38–39 (citing Ex. 1004, Fig. 22; Ex. 1003 ¶ 101).
Patent Owner does not address these assertions and, therefore, has
forfeited any arguments for patentability based on these uncontested
limitations. See generally Resp.; see Paper 8, 7–8 (Scheduling Order
cautioning Patent Owner that “any arguments for patentability not raised in
the response will be deemed waived”); cf. In re Nuvasive, 842 F.3d 1376,
1381 (Fed. Cir. 2016) (explaining that a patent owner waives an argument
presented in the preliminary response if it fails to renew that argument in the
patent owner response during the instituted trial). Because a preponderance
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of the evidence supports Petitioner’s arguments relating to Cornette’s
teachings, we adopt Petitioner’s arguments as our own. See Pet. 26–33, 36–
39 (and evidence cited therein); see also In re Nuvasive, 841 F.3d 966, 974
(Fed. Cir. 2016) (explaining that the Board need not make specific findings
as to claim limitations that a patent owner fails to dispute the prior art
discloses). Accordingly, Petitioner establishes that Cornette anticipates
claim 1.
2. Claim 2
Claim 2 recites “[t]he coated steel stamped product according to claim
1, wherein the said layers (c) and (d) are quasi continuous by occupying at
least 90% of a level corresponding to each said layer and wherein less than
10% of layer (c) is present at an extreme surface of the product.” Ex. 1001,
15:40–44. Petitioner explains how Cornette discloses the additional
limitations of claim 2. Pet. 39–42 (citing Ex. 1003 ¶¶ 107–108; Ex. 1004,
Fig. 22). Patent Owner does not contest Petitioner’s arguments or evidence
as to the additional limitations claim 2 and, again, has forfeited any
arguments as to the patentability of this claim. See generally Resp.; Paper 8,
7–8. Because a preponderance of the evidence supports Petitioner’s
arguments relating to Cornette’s teachings, we adopt Petitioner’s arguments
as our own. See Pet. 39–42 (and evidence cited therein); Nuvasive, 841 F.3d
at 974. Accordingly, Petitioner establishes that Cornette anticipates claim 2.
F. Obviousness Grounds
Petitioner asserts six obviousness grounds against dependent
claims 3–11: (1) in ground 2, that the subject matter of claims 8 and 11
would have been obvious over Cornette (Pet. 42–46); (2) in ground 3, that
the subject matter of claims 3, 4, 6, 7, and 10 would have been obvious over
Cornette in view of Laurent (id. at 46–57); (3) in ground 4, that the subject
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matter of claim 11 would have been obvious over Cornette in view of
Laurent, EP Laurent, and FR Laurent (id. at 57–60); (4) in ground 5, that the
subject matter of claim 5 would have been obvious over Cornette in view of
Nishibata (id. at 61–63); (5) in ground 6, that the subject matter of claim 9
would have been obvious over Cornette in view of Somani (id. at 64–68);
and (6) in ground 7, that the subject matter of claim 11 would have been
obvious over Cornette in view of Engels (id. at 68–72).
Patent Owner presents responsive arguments only for claim 11,
challenged in grounds 2, 4, and 7, and claim 9, challenged in ground 6. We
first address the contested grounds and claims and then turn to the
uncontested grounds and claims.
1. Contested grounds and claims
We begin our analysis with the contested grounds and claims. We
address claim 9 and then claim 11.
a) Claim 9
Claim 9 depends from claim 1 and recites a hot formed product with a
strain higher than 10% and a cooling rate higher than 50°C/s. Ex. 1001,
16:39–41. Petitioner argues, “claim 9 is a product-by-process claim,” and
“the process is not entitled to patentable weight over and above the product
claimed in claim 1” because the process imparts no additional structure to
the product recited in claim 1. Pet. 64 (citing Ex. 1003 ¶ 180).
Patent Owner responds that “the limitation of claim 9 undoubtedly
imparts structure to the claimed coated steel stamped product and is entitled
to patentable weight.” Resp. 72 (citing Ex. 1001, 11:10–29). In that regard,
Patent Owner contends Petitioner’s assertion that “Somani provides a
detailed account of how ‘hot compression and simultaneous or subsequent
fast cooling’ changes the microstructure of a boron steel (Petition, pp. 64-
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65), is an admission that the degree of straining and the cooling rate, at the
very least,” affects the structure and dimensions of the stamped product. Id.
at 73. Thus, Patent Owner argues Somani evidences that the strain and
cooling rate limitation is entitled to patentable weight. Id.
Petitioner replies that, for product-by-process claim like claim 9, it
need only show that “the product in the product-by-process claim is the
same as or obvious from a product of the prior art.” Reply 20 (emphasis
omitted) (quoting Thorpe, 777 F.2d at 698). Petitioner notes Patent Owner
“at best implies” that claim 9’s recited strain and cooling rate process ranges
impart “a full martensitic transformation” or structure to the base steel and
argues that Patent Owner admits that Cornette discloses a full martensitic
base steel. Id. at 20–21 (citing Resp. 72, 77).
The question of whether claim 9’s strain and cooling process
limitations distinguish over the prior art turns on whether, as Petitioner
correctly notes, “the product in the product-by-process claim is the same as
or obvious from a product of the prior art.” Thorpe, 777 F.2d at 698. That
is, “the patentability of a product does not depend on its method of
production.” Id. Here, Patent Owner appears to argue that the product
recited in claim 9 is distinguishable from the product recited in claim 1
because the process limitations result in a fully martensitic structure. Resp.
72 (quoting Ex. 1001, 11:10–29); Sur-reply 21 (“[T]he claim 9 process
limitations result in a fully martensitic structure.”). Assuming that Patent
Owner’s argument is correct, Petitioner must show that the asserted art
discloses the same product, i.e., a fully martensitic structure, or an obvious
variation. Thorpe, 777 F.2d at 698. As Petitioner points out, Patent Owner
admits that “Vaissiere teaches full martensite for the same steel as figure 22
of Cornette at 27°C.” Resp. 77 (citing Ex. 1033, 6). In other words, Patent
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Owner admits that that Cornette’s Figure 22 has the same structure Patent
Owner alleges the process recited in claim 9 imparts. See also Ex. 1033, 6
(“The critical quenching speed enabling a completely martensitic structure,
under these conditions, is 27°C/s.”); Ex. 1003 ¶ 150 (Dr. Miles’s testimony
that although Cornette “lacks explicit disclosure of a full martensitic
structure[,]” an ordinarily skilled artisan would have understood that
Cornette discloses a full martensitic structure because “its hot-stamped steel
product can achieve a tensile strength of at least 1500 MPa”). It does not
matter that Cornette may achieve the fully martensitic structure using a
different cooling process, i.e., 27°C/s. See Thorpe, 777 F.2d at 698.18
Like the parties, we understand Petitioner’s ground to rely on Somani
only if Petitioner must establish that the prior art discloses a strain higher
than 10% and a cooling rate higher than 50°C/s. See Pet. 64; Resp. 71
(acknowledging Petitioner argues that it need not show that the prior art
teaches the strain and cooling rate limitation). Because we determine that
Petitioner does not need to make such a showing, we do not address the
parties’ arguments regarding Somani. Given the foregoing, Petitioner
establishes that the subject matter of claim 9 would have been obvious over
Cornette.

18 In its Sur-reply, Patent Owner argues Cornette’s Figure 22 “is not stamped
and stamping changes structure.” Sur-reply 21. Patent Owner similarly
argues that Petitioner provides no evidence that Cornette’s Figure 22 “would
have the claimed four-layer coating, and the fully martensitic structure”
“when stamped and cooled according to Somani.” Id. Patent Owner’s
arguments about stamping are not persuasive for the reasons we provide in
connection with the same arguments Patent Owner raises in addressing
claim 1. See supra § II.E.1.a).
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b) Claim 11
Claim 11 depends from claim 1 and further recites “wherein said layer
(a) has a thickness less than 10 micrometers.” Ex. 1001, 16:43–45.
Petitioner asserts three grounds against claim 11: obviousness over Cornette
(Pet. 43–46); obviousness over Cornette, Laurent, EP Laurent, and FR
Laurent (id. at 57–60); and obviousness over Cornette and Engels (id. at 68–
72).
(1) Obviousness over Cornette alone
Petitioner acknowledges that Cornette does not disclose a layer (a)
thickness of less than 10 micrometers. Pet. 44 (“As shown in Figure 22,
above, Cornette’s ‘interdiffusion layer’ has a thickness very close to 10 µm
(e.g., approximately 10.5 µm in at least one location).” Petitioner asserts,
however, Cornette would have rendered a 10 micrometer layer (a) thickness
obvious because “a prima facie case of obviousness exists where the claimed
ranges or amounts do not overlap with the prior art but are merely close.”
Id. (quoting MPEP § 2144.05, which cites Titanium Metals Corp. of Am. v.
Banner, 778 F.2d 775, 783 (Fed. Cir. 1985)). According to Petitioner,
Cornette’s 10.5 micrometer interdiffusion layer “is so close to the claimed
thickness that one skilled in the art would have expected them to have the
same properties.” Id. at 45 (citing Ex. 1003 ¶ 116). Petitioner further
contends that the ’683 patent’s failure to describe how reducing the
interdiffusion layer’s thickness would cause meaningful changes in the
interdiffusion layer or the coating as a whole supports its position. Id. In
other words, Petitioner contends that it has established a prima facie case of
obviousness and that Patent Owner cannot show that the 10.5 micrometer
thickness is critical to the ’683 patent. Id.
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Patent Owner responds Titanium Metals is distinguishable and that In
re Patel, 566 F. App’x 1005 (Fed. Cir. 2014) (non-precedential), is more
applicable. Resp. 62–65. Specifically, Patent Owner argues that there is no
overlap between the less than 10 micrometer thickness range in claim 11 and
Cornette’s thickness range and that Cornette fails to “teach its thickness can
be flexibly applied.” Id. at 64.
Having considered the arguments and evidence, we determine that
Petitioner has the better position. In the context of an inter partes review,
the Federal Circuit has held that overlapping ranges disclosed in the prior art
create a presumption of obviousness, which a patent owner may rebut by
showing that the claimed range is critical, i.e., it produces an unexpected
result “different in kind not merely in degree from the results of the prior
art,” that the prior art teaches away from the claimed range, or other relevant
evidence of nonobviousness. E.I. DuPont de Nemours & Co. v. Synvina
C.V., 904 F.3d 996, 1006, 1008 (Fed. Cir. 2018). A similar framework
applies to cases in which the claimed range and prior art range “do not
overlap but are close enough such that one skilled in the art would have
expected them to have the same properties.” In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003) (citing Titanium Metals, 778 F.2d at 783). Here,
similar to Peterson and DuPont, Petitioner argues that Cornette discloses a
range that renders the claimed range prima facie obvious. Thus, we consider
the general principles that apply to cases involving optimization of ranges,
particularly in the context of overlapping and close ranges. DuPont, 904
F.3d at 1008 (explaining that In re Magnum Oil Tools International, Ltd.,
829 F.3d 1354 (Fed. Cir. 2016) “did not alter the framework governing
overlapping range cases”).
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The Federal Circuit has “recognized that ‘where the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation.’” Id.
at 1006 (quoting In re Aller, 220 F.2d 454, 456 (CCPA 1955)). Thus, a
prima facie case of obviousness exists when “[t]he proportions [between the
prior art and the claimed range] are so close that . . . one skilled in the art
would have expected them to have the same properties.” Titanium Metals,
778 F.2d at 783.
Patent Owner’s reliance on Patel, which is non-precedential, falls
short here because Patel “does not stand for the proposition . . . that a
claimed range and prior art range must overlap . . . to find a prima facie
case.” In re Brandt, 886 F.3d 1171, 1177 (Fed. Cir. 2018). Nor does Patel
stand for the notion that there must be evidence from the prior art that the
range is flexible. Id. Indeed, Brandt explains that a prima facie case of
obviousness exists where “the claimed range and the prior art range abut one
another” and “there is no meaningful distinction between the two ranges.”
Id. at 1174, 1177–78 (observing that “the insignificance of the range
difference between the claims and the prior art can be gleaned from [the
Appellants’] application itself, which discloses embodiments . . . having a
density of greater than 2.5 and less than 20 pounds per cubic foot,” even
though the claimed range required a density of less than 6 pounds per cubic
foot); see also Ortho-McNeil Pharm., Inc. v. Teva Pharm. Indus., Ltd., 344
F. App’x 595, 600 (Fed. Cir. 2009) (non-precedential) (applying Titanium
Metals to a district court appeal and explaining that “[b]ecause the difference
between 1:7.1 and 1:10 is so slight, [the prior art] creates a prima facie case
of obviousness with regard to claim 6” that the patent owner can rebut “if it
can show that the prior art teaches away from the claimed range, or the
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claimed range produces new and unexpected results over the prior art
range”).
It is undisputed on this record that Cornette discloses a layer (a)
thickness of approximately 10.5 micrometers. Pet. 44; Ex. 1003 ¶ 115; see
Resp. 62–65 (not contesting Petitioner’s showing regarding Cornette’s layer
(a) thickness). We find that the ranges “are close enough such that a person
of ordinary skill in art would have expected them to have the same
properties.” Peterson, 315 F.3d at 1329 (citation omitted); see Ex. 1003
¶ 116. And, as in Brandt, the ’683 patent itself supports Petitioner’s position
that there is no meaningful difference between Cornette’s 10.5 micrometer
thickness and the 10 micrometer thickness recited in claim 11. See
Ex. 1001, 6:56–61 (disclosing embodiments in the thickness of layer (a) is
“less than 15 micrometers, for example 14, 12, 10, 8, 6, 4, 2, or 1
micrometers, and all whole numbers, ranges and subranges therebetween . . .
including all numbers between each listed value . . . (e.g., 13.84
micrometers)”). Accordingly, Petitioner establishes a prima facie case of
obviousness for claim 11 and the burden of production shifts to Patent
Owner to come forward with evidence of teaching away, unexpected results,
or other pertinent evidence of nonobviousness. DuPont, 904 F.3d at 1008.
Patent Owner, however, does not direct us to any evidence that
Cornette teaches away from the layer (a) thickness recited in claim 11. See
generally Resp.; Sur-reply. Nor does Patent Owner provide evidence of
unexpected results or other pertinent evidence of nonobviousness. Id. Thus,
Petitioner establishes that claim 11 would have been obvious over Cornette.
(2) Remaining grounds
Having determined that claim 11 of the ’638 patent would have been
obvious over Cornette alone, we do not address Petitioner’s additional
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obviousness grounds challenging claim 11 based on Cornette, Laurent,
EP Laurent, and FR Laurent or Cornette and Engels. See SAS Inst. Inc. v.
Iancu, 138 S. Ct. 1348, 1359 (2018) (holding a petitioner “is entitled to a
final written decision addressing all of the claims it has challenged”).
2. Uncontested grounds and claims
As noted above, Petitioner argues that the subject matter of claims 3–8
and 10 would have been obvious over Cornette and additional prior art
references. Claims 3–8 and 10 depend directly from claim 1. Claims 3–6
recite components and compositions of the steel in the strip and claim 7
recites a composition of the aluminum or aluminum alloy pre-coating. Id. at
15:45–16:36. Claim 8 recites a land motor vehicle comprising the heat
treated coated steel product. Id. at 16:37–38. Claim 10 recites a coated
stamped steel product wherein the product includes a full martensitic
structure. Id. at 16:42–43.
For each claim and ground, Petitioner explains how the asserted art
discloses the additional limitations of the claim and provides reasons why
one of ordinary skill in the art would have had a reason to combine the
references’ disclosures with a reasonable expectation of success in achieving
the claimed inventions. See Pet. 42–43 (ground 2, claim 8 as having been
obvious over Cornette), 46–57 (ground 3, claims 3, 4, 6, 7, and 10 as having
been obvious over Cornette and Laurent), 61–63 (ground 5, claim 5 as
having been obvious over Cornette and Nishibata). In arguing that
Petitioner fails to carry its burden on these challenges, Patent Owner refers
to its arguments with respect to claim 1. See Resp. 61–62. For the reasons
we discuss above, we do not find those arguments persuasive. Because a
preponderance of the evidence supports Petitioner’s arguments as to claims
3–8 and 10, we adopt Petitioner’s arguments as our own. See Pet. 42–43,
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46–57, 61–63 (and evidence cited therein); Nuvasive, 841 F.3d at 974.
Accordingly, Petitioner establishes that claim 8 would have been obvious
over Cornette, claims 3, 4, 6, 7, and 10 would have been obvious over
Cornette and Laurent, and claim 5 would have been obvious over Cornette
and Nishibata.
III. CONCLUSION
Based on the evidence and arguments, Petitioner establishes by a
preponderance of the evidence that claims 1–11 of the ’683 patent are
unpatentable.19
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner establishes by a preponderance of the
evidence that claims 1–11 of the ’683 patent are unpatentable; and
FURTHER ORDERED that, because this is 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.
In summary:

19 Should Patent Owner wish to pursue amendment of the 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 chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its 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).
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Claim(s)

35
U.S.C. §
Reference(s)/Basis Claim(s)
shown
unpatentable
Claim(s)
Not shown
unpatentable
1, 2 102 Cornette 1, 2
8, 11 103 Cornette 8, 11
3, 4, 6, 7,
10
103 Cornette, Laurent 3, 4, 6, 7, 10
11 103 Cornette, Laurent,
EP Laurent,
FR Laurent20

5 103 Cornette, Nishibata 5
9 103 Cornette, Somani 9
11 103 Cornette, Engels21
Overall
Outcome
1–11

20 As discussed in § II.F1.(b)(2), we do not reach this ground.
21 As discussed in § II.F1.(b)(2), we do not reach this ground.
IPR2019-01275
Patent 9,708,683 B2
52
FOR PETITIONER:
Dion Bregman
Michael Miller
Hosang Lee
Daniel Bucca
Alexander Stein
MORGAN, LEWIS & BOCKIUS LLP
dion.bregman@morganlewis.com
michael.miller@morganlewis.com
hosing.lee@morganlewis.com
daniel.bucca@morganlewis.com
alexander.stein@morganlewis.com

FOR PATENT OWNER:
Jennifer L. O’Connell
William C. Gehris
David Petroff
Cary S. Kappel
DAVIDSON, DAVIDSON & KAPPEL, LLC
joconnell@ddkpatent.com
wgehris@ddkpatent.com
dpetroff@ddkpatent.com
ckappel@ddkpatent.com