P2i Ltd.

Patent Trials and Appeals Board

Oct 21, 2020

IPR2020-00478 (P.T.A.B. Oct. 21, 2020)

Trials@uspto.gov Paper 16
571-272-7822 Date: October 21, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

FAVORED TECH CORPORATION,
Petitioner,

v.

P2I LTD,
Patent Owner.
____________

IPR2020-00478
Patent 8,389,070 B2
____________

Before KRISTINA M. KALAN, JEFFREY W. ABRAHAM, and
SHELDON M. MCGEE, Administrative Patent Judges.

ABRAHAM, Administrative Patent Judge.
DECISION
Denying Patent Owner’s Request for Rehearing
37 C.F.R. § 42.71(d)

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I. INTRODUCTION
Favored Tech Corporation (“Petitioner”) filed a Petition (Paper 1,
“Pet.”) requesting inter partes review of claims 1–17 of U.S. Patent
No. 8,389,070 B2 (Ex. 1001, “the ’070 patent”). P2i Ltd (“Patent Owner”)
filed a Preliminary Response to the Petition (Paper 7, “Prelim. Resp.”).
After receiving authorization from the Board (Paper 8), Petitioner filed a
Reply to Patent Owner’s Preliminary Response (Paper 9), and Patent Owner
filed a Sur-reply (Paper 10).
On August 25, 2020, we issued a Decision denying institution of inter
partes review. Paper 11 (“Decision” or “Dec.”).
Patent Owner filed a Request for Rehearing of our Decision. Paper 12
(“Rehearing Request” or “Req. Reh’g”). For the reasons that follow, Patent
Owner’s Rehearing Request is denied.
II. STANDARD OF REVIEW
The party challenging a decision in a request for rehearing bears the
burden of showing the decision should be modified. 37 C.F.R. § 42.71(d)
(2019). A request for rehearing “must specifically identify all matters the
party believes the Board misapprehended or overlooked, and the place where
each matter was previously addressed.” 37 C.F.R. § 42.71(d). When
rehearing a decision on a petition, the decision will be reviewed for an abuse
of discretion. 37 C.F.R. § 42.71(c).
III. BACKGROUND
In the Petition, Petitioner contends claims 1–17 of the ’070 patent are
unpatentable based on the following challenges (Pet. 4):

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Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1–3, 6, 10–14 102 Baalmann1
1–15 103 Baalmann, Coulson2
16, 17 103 Baalmann, Coulson,
Hillman3

In our Decision, we determined that Petitioner did not establish a
reasonable likelihood that it would prevail with respect to its argument that
Baalmann anticipates claims 1–3, 6, and 10–14, but did establish a
reasonable likelihood of prevailing in its obviousness challenge of claim 1
based on Baalmann alone. Dec. 14, 22–23. Because we determined
Petitioner demonstrated a reasonable likelihood of prevailing with respect to
at least one of the claims challenged in the Petition, we instituted inter
partes review of all claims and all challenges raised in the Petition.4 In an
attempt to further guide the parties after institution, we indicated that we
agreed with Patent Owner’s assertion that Petitioner failed to show that
Coulson discloses a power density value falling within the scope of the
claimed range. Dec. 27. We also addressed the evidence and arguments

1 US 2001/0015284 A1, published Aug. 23, 2001 (Ex. 1004).
2 Coulson et al., Ultralow Surface Energy Plasma Polymer Films, Chem.
Mater. Vol. 12, No. 7, 2031–2038 (2000) (Ex. 1003).
3 US 5,451,258, issued Sept. 19, 1995 (Ex. 1005).
4 Guidance on the Impact of SAS on AIA Trial Proceedings (Apr. 26, 2018),
https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-
board/trials/guidance-impact-sas-aia-trial; see also SAS Inst., Inc. v. Iancu,
138 S. Ct. 1348, 1359–60 (2018).
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regarding whether a person of ordinary skill in the art would have had reason
to combine the teachings of Baalmann and Coulson, and whether a skilled
artisan would have had a reasonable expectation of success. Dec. 27–29. In
our Decision, we expressly indicated that “we have not made a final
determination with respect to the patentability of any challenged claim or
any underlying factual or legal issues.” Dec. 33.
IV. DISCUSSION
Patent Owner contends that we “incorrectly instituted trial based on a
ground not asserted in the Petition,” and that our Decision overlooks and
misapprehends arguments and evidence “that undermine the new
obviousness ground based on Baalmann alone.” Req. Reh’g 3–4. Patent
Owner also contends that our Decision “suggest[s] that the alleged grounds
based on Coulson in combination with Baalmann remain viable despite
Coulson’s failure to disclose the claimed power density.” Req. Reh’g. 3.
1. Whether the Board Exceeded Its Authority and Abused Its
Discretion by Instituting Inter Partes Review
Based on Baalmann Alone
Patent Owner contends we abused our discretion to institute inter
partes review because we instituted review on a new ground not asserted in
the Petition. Req. Reh’g 4–6. We disagree. As we noted in the Decision,
Petitioner presented evidence demonstrating Baalmaan alone disclosed or
suggested all limitations in claim 1. Dec. 15–22. We also indicated that
Petitioner presented evidence that a person of ordinary skill in the art would
have had reason to combine the various disclosures within Baalmann to
arrive at the claimed invention. Dec. 18–20. As such, we did not present a
new argument on behalf of Petitioner, nor did we “raise address, and decide
unpatentability theories never presented by the petitioner.” Req. Reh’g 5.
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Instead, as permitted by statute, we instituted review based on information
presented in the Petition. 35 U.S.C. § 314(a) (2018); Req. Reh’g 5. We
identified where Petitioner presented “the grounds on which the challenge to
each claim is based, and the evidence that supports the grounds for the
challenge to each claim” in the Petition. Req. Reh’g 5 (citing 35 U.S.C. §
312(a)(3)) (emphasis omitted). Accordingly, we did not institute review on
our own independent grounds of review, and, therefore, did not “act[]
outside of [our] statutory and regulatory authority.” Req. Reh’g 6.
2. Whether the Board Erred in Instituting Inter Partes Review Based
on Baalmann Alone
Patent Owner contends that we incorrectly determined that “Petitioner
has presented evidence demonstrating . . . that a person of ordinary skill in
the art would have had reason to combine the various disclosures within
Baalmann to arrive at the claimed invention.” Req. Reh’g 9. Patent Owner
notes that we cited pages 31 and 37 in support of this statement in our
Decision, but contends that neither page of the Petition provides evidence
regarding a reason to combine the various disclosures within Baalmann.
Req. Reh’g 8. Patent Owner further argues that, absent evidence and a
rational underpinning demonstrating why a person of ordinary skill in the art
would have combined the distinct disclosures in Baalmann regarding plasma
zone volume and power input, our determination that Petitioner has shown a
reasonable likelihood that claim 1 is obvious over Baalmann conflicts with
our determination that Petitioner failed to demonstrate Baalmaan discloses
all of the limitations of claim 1 for purposes of Petitioner’s anticipation
challenge. Req. Reh’g 10–11.
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We are not persuaded by Patent Owner’s arguments. Patent Owner
criticizes our citation to pages 31 and 37 of the Petition on pages 18 through
19 of the Decision, alleging neither page 18 or 19 provides evidence
regarding a reason to combine the various disclosures within Baalmann. But
our discussion of this issue did not end on page 19 of the Decision, nor did
we rely solely on pages 31 and 37 of the Petition. Instead, on pages 20–21
of the Decision, we stated that
Petitioner also provides a reason why a person of ordinary skill
in the art would have used [Baalmann’s] outer-wall configuration
with a 1 m3 chamber such that the plasma zone covers the full
chamber volume: “because doing so would have maximized the
effective chamber capacity at any given chamber size by
allowing the reactive plasma to reach all substrate surfaces, even
for large substrates or large batches of smaller substrates
extending near the outer limits of the chamber.” Pet. 35;
Ex. 1002 ¶ 125.
Dec. 20–21. Patent Owner does not address this portion of the Decision or
our citation to page 35 of the Petition in the section of its Rehearing Request
asserting we incorrectly found the Petition asserts a ground of obviousness
based on Baalmann alone. Req. Reh’g 7–11.5 These portions of the record,
which address Petitioner’s evidence demonstrating a person of ordinary skill
in the art would have had reason to use a particular reactor configuration and
plasma zone size, undermine Patent Owner’s assertion that “Petitioner’s
obviousness theory fails to provide any reasoning why a POSA would
combine Baalmann’s separate and distinct teachings to arrive at the claimed

5 We note that Patent Owner does address this portion of the Decision in a
separate section, arguing that we overlooked arguments that defeat this
theory of obviousness. Req. Reh’g 12–14. We address those arguments
below.
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method with the combination of a power density of 0.001 to 500 w/m³ in a
reactor having a plasma zone of greater than 0.5 m³.” Req. Reh’g 11.
In our Decision, we expressly noted that Petitioner refers to
Baalmann’s general disclosure of “applying power to the plasma chamber at
power densities ‘between 0.5 kilowatt/m3 and 5 kilowatt/m3.’” Dec. 17
(citing Pet. 37; Ex. 1004 ¶ 18). It is undisputed that this power range is not
tied to any particular reactor volume or plasma zone size. Req. Reh’g 7;
Prelim. Resp. 18–19 (arguing that Baalmann does not “link its power per
chamber volume range with any particular reactor size or plasma zone
size”). Taken together with Petitioner’s evidence regarding the use of a
chamber configured to provide a plasma zone of 1 m3, we determined
Petitioner offered evidence demonstrating sufficiently for purposes of
institution that a person of ordinary skill in the art would have had reason to
combine the various disclosures within Baalmann to arrive at the claimed
invention. Nothing in Patent Owner’s Rehearing Request demonstrates
persuasively that this initial determination was incorrect or that we erred in
instituting trial based on Baalmann alone.
3. Whether the Board Overlooked Arguments that Defeat Any Theory
of Obviousness Based on Baalmann Alone
Patent Owner contends that we overlooked arguments and evidence
provided in the Preliminary Response that refute a theory of obviousness
based on Baalmann alone. Req. Reh’g 12. In particular, Patent Owner
contends that it presented evidence that Baalmann’s 1 m3 reactor with an
outer wall electrode configuration would not have a plasma zone of 1 m3,
evidence that “Baalmann teaches away from the claimed method because in
Baalmann discloses applying a power of 2kW in its only example using a
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reactor large enough to potentially satisfy claim 1’s plasma zone volume
requirement,” and evidence that a person of ordinary skill in the art “would
not have been motivated to use powers within the claimed range in a large
scale reactor, because the prior art, including Baalmann, consistently
disclosed use of power densities outside the claimed range for larger
reactors.” Req. Reh’g 12–14 (citing Prelim. Resp. 20–24, 54–56).
We disagree that we overlooked Patent Owner’s arguments and
evidence regarding the plasma zone volume of Baalmann’s 1 m3 reactor. To
the contrary, we discussed Patent Owner’s arguments and evidence on this
topic on pages 19 through 21 of our Decision. See Dec. 19–21 (including
citations to pages 20–24 of the Preliminary Response). After considering
these arguments, we determined that Petitioner had directed us to evidence
sufficient to establish a reasonable likelihood of prevailing in its obviousness
challenge of claim 1 based on Baalmann alone, and proceeded to explain the
basis for our determination. Dec. 20–23 (citing Pet. 34–35; Prelim. Resp.
22–23).
We have also reconsidered Patent Owner’s arguments anew, but,
nevertheless, determine that our previous analysis of and disagreement with
Patent Owner’s assertions is still correct. Specifically, at this stage of the
proceeding, we are unpersuaded by the evidence from Patent Owner’s
declarant, Dr. Parsons, indicating that there would be regions within
Baalmann’s 1 m3 reactor that would be incapable of forming the plasma
zone. Req. Reh’g 12–13 (citing Ex. 2001 ¶¶ 78–79). Dr. Parson’s opinions
appear conclusory and do not include the underlying facts on which his
opinions are based. 37 C.F.R. § 42.65(a). We balance this against the
evidence submitted by Petitioner, most of which comes from Baalmann
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itself or is not specifically disputed. For example, Petitioner’s evidence
includes (1) Baalmann’s disclosure of using a plasma reactor with “an
evacuable chamber with a volume of 1 m3,” (Pet. 34–35 (citing Ex. 1004 ¶
47)); (2) evidence that to a person of ordinary skill in the art, “evacuable
chamber volume identifies the internal volume of a chamber that can be
occupied by a gas” (Pet. 25 (citing Ex. 1002 ¶¶ 49, 102)); (3) Baalmann’s
disclosure of using an electrode configuration that has one electrode formed
by the chamber wall (Pet. 24 (citing Ex. 1004 ¶¶ 35, 61), 34–35); and (4)
evidence that an outer-electrode configuration would have created an electric
field, and therefore generated plasma, throughout the chamber’s full volume
during operation (Pet. 25 (citing Ex. 1004 ¶¶ 35, 47, 61; Ex. 1002 ¶ 103),
34–35). In view of this, we remain persuaded that Petitioner has
demonstrated sufficiently, for purposes of institution, that Baalmann
discloses or suggests a plasma zone of 1 m3. Dec. 20–21.
With also disagree with Patent Owner’s argument that we overlooked
evidence of teaching away in Baalmann. Req. Reh’g 14. In rendering a
decision, the Board is not required to “address every argument raised by a
party or explain every possible reason supporting its conclusion.” Synopsys,
Inc. v. Mentor Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016).
Although we did not expressly discuss Petitioner’s specific arguments, our
determination that Baalmann does disclose or suggest the use of power
density values within the claimed range in a large scale reactor was a clear
indication that we disagreed with Patent Owner’s position. As noted in the
Decision, our determination regarding the use of a power density falling
within the claimed range in a large scale reactor was based on undisputed
facts relating to Baalmann’s disclosure: (1) Baalmann discloses applying
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power to the plasma chamber at power densities between 0.5 kilowatt/m3
(500 W/m3) and 5 kilowatt/m3 (Dec. 21–22 (citing Pet. 37; Ex. 1004 ¶ 18;
Prelim. Resp. 18–19)); (2) Baalmann’s disclosure of this power density is
not tied to any particular reactor volume (Dec. 12 (citing Prelim. Resp. 19));
and (3) Baalmann discloses the use of a 1 m3 plasma reactor (Dec. 20). As
discussed above, we also determined that Petitioner provided a reason why a
person of ordinary skill in the art would have had reason to use a large scale
reactor. Dec. 20–21. We determined this evidence was sufficiently
persuasive to demonstrate that the subject matter of claim 1 would have been
obvious to a person of ordinary skill in the art in view of Baalmann, even in
view of Patent Owner’s arguments and evidence regarding Baalmann’s
disclosure of one example using a 1 m3 chamber and a power density
of 2kW. Dec. 22.
Nevertheless, because we did not expressly discuss Patent Owner’s
teaching away argument in the Decision, we will do so here. With regard to
Patent Owner’s contention that “Baalmann teaches away from the claimed
method because . . . Baalmann discloses applying a power of 2kW in its only
example using a reactor large enough to potentially satisfy claim 1’s plasma
zone volume requirement, which would result in a plasma power density
well outside the claimed range” (Req. Reh’g 14), we note that a reference
teaches away from a claimed invention if it “criticize[s], discredit[s], or
otherwise discourage[s]” modifying the reference to arrive at the claimed
invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Patent
Owner does not direct us to any such evidence in Baalmann, and we will not
“read into a reference a teaching away . . . where no such language exists.”
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DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1364 (Fed. Cir. 2006).
Additionally, although the one example of a 1 m3 reactor in Baalmann
involved using a power density that did not fall within the claimed range, for
purposes of an obviousness analysis, we cannot ignore the broader
disclosure of Baalmann regarding the use of power densities in the range of
between 0.5 kW/m3 and 5kW/m3, which does overlap the claimed range.
See In re Wesslau, 353 F.2d 238, 241 (CCPA 1965) (“It is impermissible
within the framework of section 103 to pick and choose from any one
reference only so much of it as will support a given position, to the exclusion
of other parts necessary to the full appreciation of what such reference fairly
suggests to one of ordinary skill in the art.”).
We turn next to Patent Owner’s argument that we overlooked
evidence that
despite Baalmann’s generic teaching of a range of power input
per reactor volume of 0.5 to 5 kW/m3, a POSA would not have
been motivated to use powers within the claimed range in a large
scale reactor, because the prior art, including Baalmann,
consistently disclosed use of power densities outside the claimed
range for larger reactors.
Req. Reh’g 14. Patent Owner cites to pages 54–56 of the Preliminary
Response as the source for this argument and evidence. Although these
pages do provide a discussion of the use of certain power densities in prior
art references, this portion of the Preliminary Response primarily addresses
Patent Owner’s arguments regarding whether a person of ordinary skill in
the art “would have had a reasonable expectation of success when
combining the disparate process of Coulson and Baalmann,” not what a
person of ordinary skill in the art would have been “motivated” to do.
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Prelim. Resp. 56; see Par Pharmaceutical v. Twi Pharmaceuticals, Inc., 773
F.3d 1186, 1196 (Fed. Cir. 2014) (noting the proper analysis under § 103
requires “consideration of two factors: (1) whether the prior art would have
suggested to those of ordinary skill in the art that they should make the
claimed composition or device, or carry out the claimed process; and (2)
whether the prior art would also have revealed that in so making or carrying
out, those of ordinary skill would have a reasonable expectation of success”)
(quoting Medichem, S.A. v. Rolabo S.L., 437 F.3d 1157, 1164 (Fed. Cir.
2006). As such, Patent Owner appears to present a new argument for the
first time in the Rehearing Request. Not only is such an argument improper
(see 37 C.F.R. § 42.71(d)), but the fact that it was raised for the first time in
the rehearing means it is not something we could have overlooked.
Even if Patent Owner had presented this “motivation” argument in the
Preliminary Response, we remain unpersuaded of any error in our Decision.
Patent Owner fails to explain sufficiently why a person of ordinary skill in
the art would look to other prior art references for guidance regarding the
use of a particular power density in large scale reactors in view of our
determination that Baalmann itself discloses the use of a power density in
the claimed range in a large scale reactor.
4. Alleged Error in Discussing Challenges Based on Coulson and
Baalmann
In our Decision, we agreed with Patent Owner that Petitioner failed to
show Coulson discloses a power density value falling with the scope of the
claimed range. Dec. 27. We also noted, however, that we are required to
institute inter partes review on all challenges and all claims raised in the
Petition. Dec. 24 n.6. As a result, despite our preliminary determination
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regarding deficiencies in Coulson’s disclosure, Petitioner’s challenge based
on the combined disclosure of Coulson and Baalmann remains part of this
inter partes review.
Furthermore, we stated that “we have not made a final determination
with respect to the patentability of any challenged claim or any underlying
factual or legal issues.” Dec. 33. Thus, to the extent Petitioner wishes to
address our preliminary determination regarding Coulson’s disclosure, it
may. Accordingly, we deemed it appropriate to provide the parties with
guidance regarding the evidence presented addressing reasons why a person
of ordinary skill in the art would have combined the teachings of Coulson
and Baalmann, and whether a skilled artisan would have had a reasonable
expectation of success. This evidence is different from the evidence
regarding whether Coulson discloses a power density value falling with the
scope of the claimed range. Therefore, even in view of our statement that
“Petitioner and Dr. Gleason present substantial reasons why a person of
ordinary skill in the art would have combined the teachings of Coulson and
Baalmann, and would have had a reasonable expectation of successfully
arriving at the claimed invention” (Dec. 29), we maintain that our
preliminary determination in the Decision that Petitioner failed to show that
Coulson discloses a power density value falling with the scope of the
claimed range is correct.
V. CONCLUSION
For all of the foregoing reasons, Patent Owner has not demonstrated
that we abused our discretion in instituting inter partes review of claims
1–17 of the ’070 patent.

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VI. ORDER
For the reasons given, it is:
ORDERED that Patent Owner’s Request for Rehearing is denied.

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For PETITIONER:
Andrew Dufresne
dufresne-ptab@perkinscoie.com
Han-Wei Chen
chen-ptab@perkinscoie.com
Nathan Kelley
kelley_nathan-ptab@perkinscoie.com
Mengke Xing
xing-ptab@perkinscoie.com

For PATENT OWNER:
Paul Henkelmann
phenkelmann@fitcheven.com
Timothy Maloney
tpmalo@fitcheven.com