P2i Ltd.

Patent Trials and Appeals Board

Aug 23, 2021

IPR2020-00478 (P.T.A.B. Aug. 23, 2021)

Trials@uspto.gov Paper 31
571-272-7822 Date: August 23, 2021

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.
JUDGMENT
Final Written Decision
Determining No Challenged Claims Unpatentable
35 U.S.C. § 318(a)
Dismissing Petitioner’s Motion to Exclude
37 C.F.R. § 42.64
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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). 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 instituted inter partes review of all of the
challenged claims based on all of the grounds identified in the Petition.
Paper 11 (“Inst. Dec.”). Subsequently, Patent Owner filed a Request for
Rehearing (Paper 13), which we denied (Paper 16). Patent Owner next filed
a Response (Paper 17, “PO Resp.”), Petitioner filed a Reply (Paper 20,
“Reply”), and Patent Owner filed a Sur-reply (Paper 23, “Sur-reply”).
Petitioner filed a Motion to Exclude several of Patent Owner’s
exhibits (Paper 26), Patent Owner filed an Opposition to Petitioner’s Motion
to Exclude (Paper 28), and Petitioner filed a Reply in Support of its Motion
to Exclude (Paper 29).
We held an oral hearing on June 2, 2021, and a transcript of the
hearing has been entered into the record. Paper 30 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons that
follow, we determine that Petitioner has not shown by a preponderance of
the evidence that claims 1–17 of the ’070 patent are unpatentable.
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A. Related Proceedings
The parties indicate that they are not aware of any related matters.
Pet. 2; Paper 4, 1.
B. The ’070 Patent
The ’070 patent, titled “Coating of a Polymer Layer Using Low Power
Pulsed Plasma in a Plasma Chamber of a Large Volume,” issued on
March 5, 2013. Ex. 1001, codes (45), (54). The ’070 patent is directed to a
method for depositing a polymeric material onto a substrate, and “is
particularly suitable for producing oil and water repellent coatings.”
Ex. 1001, code (57). The method of the ’070 patent comprises
introducing [a] monomeric material in a gaseous state into a
plasma deposition chamber, igniting a glow discharge within
said chamber, and applying a voltage as a pulsed field, at a power
of from 0.001 to 500 w/m3 for a sufficient period of time to allow
a polymeric layer to form on the surface of the substrate.
Ex. 1001, 2:10–15. The ’070 patent discusses prior art plasma deposition
processes that use small scale production units of 470 cm3, and explains that
most commercial applications require much larger-scale production units,
but “initial trials revealed that replication of the conditions used in the small-
scale unit in larger chambers did not produce satisfactory results.” Ex. 1001,
2:1–7. The ’070 patent indicates that its method is suitable for use in large
chambers, such as those “where the plasma zone has a volume of greater
than 500 cm3, for instance 0.5 m3 or more, such as from 0.5 m3–10 m3 and
suitably at about 1 m3,” and produces layers that have good properties at
power density levels that are unexpectedly lower than those conventionally
used in plasma deposition processes. Ex. 1001, 2:19–31.
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C. Illustrative Claim
Petitioner challenges claims 1–17 of the ’070 patent. Pet. 1. Claim 1
is the only independent claim, and is reproduced below:
1. A method for depositing a polymeric material onto a
substrate, the method comprising introducing a
monomeric material in a gaseous state into a plasma
deposition chamber in which a plasma zone has a volume
of at least 0.5 m3, igniting a glow discharge within said
chamber, and applying a voltage as a pulsed field, at a
power of from 0.001 to 500 w/m3 for a sufficient period
of time to allow a polymeric layer to form on the surface
of the substrate.
Ex. 1001, 10:22–29.
D. The Asserted Unpatentability Challenges
Petitioner contends claims 1–17 of the ’070 patent are unpatentable
based on the following challenges:
Claims Challenged 35 U.S.C. §1 Reference(s)/Basis
1–3, 6, 10–14 102 Baalmann2
1–15 103 Baalmann, Coulson3
16, 17 103 Baalmann, Coulson,
Hillman4

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), which amended 35 U.S.C. §§ 102 and 103,
became effective March 16, 2013. Because the application from which the
’070 patent issued was filed before this date, the pre-AIA version of §§ 102
and 103 applies.
2 US 2001/0015284 A1, published Aug. 23, 2001 (Ex. 1004).
3 Coulson et al., Ultralow Surface Energy Plasma Polymer Films, Chem.
Mater. Vol. 12, No. 7, 2031–2038 (2000) (Ex. 1003).
4 US 5,451,258, issued Sept. 19, 1995 (Ex. 1005).
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Petitioner also relies on declarations from Karen Gleason, Ph.D.
(Ex. 1002, “the Gleason Declaration”; Ex. 1022). Patent Owner relies on a
declaration from Gregory N. Parsons, Ph.D. (Ex. 2010, “the Parsons
Declaration”).
II. ANALYSIS
A. 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 Phillips, claim terms
are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d
at 1312. “[T]he ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention.” Id. at 1313. “Importantly, the person
of ordinary skill in the art is deemed to read the claim term not only in the
context of the particular claim in which the disputed term appears, but in the
context of the entire patent, including the specification.” Id.
Petitioner proposes constructions for the terms “plasma zone” and
“between 1 m3 and 10 m3.” Pet. 15–18. Petitioner also contends that the
term “1H, 1H, 2H, 3H-heptadecafluorodecylacylate” in claim 9 contains two
typographical errors (indicated by underlining), and should be construed to
correctly recite HDFDA (1H, 1H, 2H, 2H-heptadecafluorodecylacrylate).
Pet. 18. Petitioner’s argument is based on the language of claim 8 and the
remaining language in claim 9, which identify the specified compounds as
acrylates. Pet. 18–19 (citing Ex. 1001, 10:60–61, 10:66–67). Petitioner also
relies on the language in the Specification that repeatedly identifies 1H, 1H,
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2H, 2H-heptadecafluorodecylacrylate as a preferred monomer, and notes the
Specification never mentions 1H, 1H, 2H, 3H-heptadecafluorodecylacrylate.
Pet. 19.
Patent Owner disputes Petitioner’s proposed construction of “plasma
zone.” PO Resp. 9–16. Patent Owner, however, also argues that we do not
need to construe this term to determine the outcome of this proceeding. Sur-
reply 1. Patent Owner does not address the alleged error in claim 9.
After considering Petitioner’s arguments regarding claim 9, Patent
Owner’s silence regarding claim 9, and the language in the ’070 patent itself
(e.g., Ex. 1001, 11:45–52, 12:60–61), we agree with Petitioner that the term
“1H, 1H, 2H, 3H-heptadecafluorodecylacylate” in claim 9 should be
construed to correctly recite HDFDA (1H, 1H, 2H, 2H-
heptadecafluorodecylacrylate). The error Petitioner identifies is conspicuous
and undisputed, and the intrinsic record does not suggest a different
interpretation. Fitbit, Inc. v. Valencell, Inc., 964 F.3d 1112, 1119–20 (Fed.
Cir. 2020); Novo Industries, L.P. v. Micro Molds Corp., 350 F.3d 1348,
1357 (Fed. Cir. 2003).
Additionally, after reviewing the parties’ remaining claim
construction arguments and evidence, we determine that we do not need to
expressly construe any other terms for purposes of this Decision because, as
addressed in detail below, we find Petitioner’s showings deficient for
reasons that do not depend on the construction of any claim term. See Nidec
Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
(Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
controversy, and only to the extent necessary to resolve the controversy.”)).
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B. Level of Ordinary Skill in the Art
Petitioner contends that a person of ordinary skill in the art in the field
of the ’070 patent would have had “at least a bachelor’s degree in a field
such as chemistry, physics, or chemical engineering, as well as at least two
years of experience with plasma-polymerization techniques.” Pet. 14 (citing
Ex. 1002 ¶¶ 26–31).
Patent Owner agrees with this proposed definition “with the
understanding that ‘experience with plasma-polymerization techniques’
includes plasma-enhanced chemical vapor deposition (PECVD) techniques.”
PO Resp. 9 (citing Ex. 2010 ¶ 20; Ex. 1002 ¶¶ 12, 63).
In light of the record before us, we adopt Petitioner’s proposal
regarding the level of one of ordinary skill in the art. As Patent Owner
points out, Dr. Gleason states that PECVD is a form of plasma
polymerization, and thus the parties agree that experience with plasma-
polymerization techniques would include PECVD. PO Resp. 9; Ex. 1002
¶ 63. The level of ordinary skill in the art is also reflected by the prior art of
record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
C. Legal Principles
1. Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. Inc., v. Union Oil Co., 814 F.2d 628, 631
(Fed. Cir. 1987). Moreover, “[b]ecause the hallmark of anticipation is prior
invention, the prior art reference—in order to anticipate under 35 U.S.C.
§ 102—must not only disclose all elements of the claim within the four
corners of the document, but must also disclose those elements ‘arranged as
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in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369
(Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542,
1548 (Fed. Cir. 1983)). Whether a reference anticipates is assessed from the
perspective of an ordinarily skilled artisan. See Dayco Prods., Inc. v. Total
Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“‘[T]he
dispositive question regarding anticipation [i]s whether one skilled in the art
would reasonably understand or infer from the [prior art reference’s]
teaching’ that every claim element was disclosed in that single reference.”)
(quoting In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991)
(emphasis added)).
2. Obviousness
In Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), the
Supreme Court set out a four-factor framework for assessing obviousness
under § 103: (1) the “level of ordinary skill in the pertinent art,” (2) the
“scope and content of the prior art,” (3) the “differences between the prior
art and the claims at issue,” and (4) “secondary considerations” of non-
obviousness such as “commercial success, long-felt but unsolved needs,
failure of others, etc.” Id. at 17–18. “While the sequence of these questions
might be reordered in any particular case,” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 407 (2007), the Federal Circuit has “repeatedly emphasized
that an obviousness inquiry requires examination of all four Graham factors
and that an obviousness determination can be made only after consideration
of each factor.” Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1335 (Fed. Cir.
2016).
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D. Claims 1–3, 6, 10–14 — Alleged Anticipation by Baalmann
Petitioner contends Baalmann anticipates claims 1–3, 6, and 10–14.
Pet. 22–31; Reply 25. Petitioner directs us to portions of Baalmann that
purportedly disclose all the limitations of the challenged claims, and also
relies on the Gleason Declaration to support its arguments.
1. Baalmann (Ex. 1004)
Baalmann discloses methods for applying a plasma-polymer coating
to an insulator. Ex. 1004, code (57). Baalmann’s method includes, inter
alia, introducing part of an insulator into a vacuum chamber of a plasma
reactor, evacuating the chamber, admitting a working gas into the chamber,
and forming a plasma from the working gas by generating an electrical field
in the chamber, wherein an electrical power input per chamber volume is set
to between 0.5 kW/m3 and 5 kW/m3. Ex. 1004 ¶¶ 14–20. Baalmann states
that “[t]he ignition of the plasma by generating an electric field can take
place in a way known” to one of ordinary skill in the art, including “by
applying a voltage to electrodes arranged on the chamber.” Ex. 1004 ¶ 35.
Baalmann discloses various electrode arrangements, including having one
electrode in the form of a rod while the other electrode is formed by the
chamber wall itself, or using two opposite rod-shaped electrodes. Ex. 1004
¶ 35. Baalmann also provides specific examples of its process that use a
plasma reactor having an evacuable chamber with a volume of 1 m3.
Ex. 1004 ¶¶ 47–48.
2. Analysis
Independent claim 1 of the ’070 patent requires, inter alia, introducing
a monomeric material in a gaseous state into a plasma deposition chamber in
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which a plasma zone has a volume of at least 0.5 m3, and applying a voltage
as a pulsed field at a power of from 0.001 to 500 w/m3. Ex. 1001, 10:22–29.
With regard to plasma zone volume, Petitioner argues that in
Example 1, Baalmann discloses using an evacuable chamber having a
volume of 1 m3 as its plasma chamber, which means the chamber has an
internal volume of 1 m3 that can be occupied by a gas. Pet. 25 (citing
Ex. 1002 ¶¶ 49, 102). Petitioner acknowledges that Baalmann does not
explicitly identify the electrode configuration used for the plasma chamber
of Example 1, but contends a person of ordinary skill in the art would have
understood that the plasma chamber for Example 1 “would be configured as
described throughout the rest of the specification: with the chamber wall
serving as one of the electrodes,” because, according to Petitioner, Baalmann
“emphasized using plasma chambers in which one electrode was ‘formed by
the chamber wall itself.’” Pet. 24 (citing Ex. 1004 ¶¶ 35, 61).
In view of this, Petitioner asserts that a person of ordinary skill in the
art would have recognized that introducing a working gas into the plasma
chamber in Example 1 of Baalmann would have resulted in a gas, either
alone or in combination with any substrate in the chamber, occupying the
full 1 m3 chamber volume, and that applying electrical power to the chamber
with the outer wall serving as one of the electrodes would have generated
plasma throughout the full 1 m3 volume of the chamber. Pet. 25. Petitioner
concludes that a person of ordinary skill in the art would have understood
Baalmann as disclosing a plasma chamber having a plasma zone of at least
0.5 m3, as claim 1 requires. Pet. 24.
With regard to power density, Petitioner argues that Baalmann
discloses forming plasma using “a power of from 0.001 to 500 w/m3”
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because Baalmann generally identified 0.5 kW/m3 to 5 kW/m3 as “the
applicable power-density range, without any limitations based on chamber
size.” Pet. 27–28 (noting that 0.5 kW/m3 equals 500 W/m3). Petitioner
acknowledges that Baalmann used a power density of 2 kW/m3, which
exceeds the upper end of the range in claim 1, with the 1 m3 plasma chamber
in Example 1,5 but argues that a person of ordinary skill in the art “would
not have limited all use of a 1 m3 chamber in the disclosed methods to that
single point within the disclosed power-density range.” Pet. 28. Instead,
according to Petitioner, a person of ordinary skill in the art “would have
immediately envisaged using Baalmann’s 1 m3 plasma chamber to perform
plasma polymerization at other power densities within the disclosed range of
0.5 kW/m3 to 5 kW/m3, including at 0.5 kW/m3 (500 W/m3).” Pet. 28 (citing
Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381–83
(Fed. Cir. 2015) in support of its argument that incorporating every claim
limitation into a single working example is not required for anticipation).
Patent Owner argues that Petitioner fails to establish Baalmann
discloses each limitation of claim 1 combined in the same way as recited in
claim 1. PO Resp. 17. In particular, Patent Owner argues that Petitioner
“attempt[s] to cobble together unrelated disclosures of Baalmann” to
demonstrate anticipation. PO Resp. 18–20. These allegedly cobbled-
together disclosures include: Baalmann’s general disclosure of reactors that
use the chamber wall as one electrode; Baalmann’s general disclosure of a
power density between 0.5 kW/m3 and 5 kW/m3; and Baalmann’s specific
disclosure of a 1 m3 reactor in Example 1.

5 Based on Petitioner’s argument that the reactor in Example 1 had a plasma
zone volume of 1 m3. Pet. 25.
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With regard to power density, Patent Owner contends that although
Baalmann generally discloses the use of a power density between 0.5 kW/m3
and 5 kW/m3, Baalmann does not “link its power per chamber volume range
with any particular reactor size or plasma zone size.” PO Resp. 19. Patent
Owner notes that Baalmann’s only disclosure of power requirements for a
particular reactor size are in Examples 1 and 2, which apply a power density
of 2 kW/m3 and 3.4 kW/m3, respectively, and that these power density
values are much higher than the upper limit of the claimed plasma power
density range of 500 W/m3. PO Resp. 18–19.
As to plasma zone volume, Patent Owner argues that Baalmann does
not expressly disclose the plasma zone volume of the reactor in Example 1,
or provide the details of the electrode configuration in the reactor used in
Example 1. PO Resp. 22–24. Patent Owner asserts that, as a result,
Petitioner and Dr. Gleason can only speculate that the reactor in Example 1
uses the chamber wall as one electrode, and that such a reactor would form a
plasma zone filling the entire reactor. PO Resp. 23–24. According to Patent
Owner, these assumptions, combined with the assumption that a person of
ordinary skill in the art would have used a power density at the lower
endpoint of the range disclosed in Baalmann for the reactor in Example 1,
form the basis of Petitioner’s anticipation challenge. Patent Owner contends
not only that such assumptions are incorrect and unfounded, but also that
relying on such unfounded assumptions and speculation about the reactor in
Example 1 is insufficient to demonstrate Baalmann anticipates claim 1. PO
Resp. 22–24.
We agree with Patent Owner. Petitioner has failed to demonstrate
adequately that each and every element in claim 1, arranged as recited in the
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claim, is found in a single prior art reference. NetMoneyIN, 545 F.3d
at 1369; Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383
(Fed. Cir. 2001). Here, Petitioner combines several different teachings from
Baalmann to support its anticipation argument. For example, Petitioner
relies on the “evacuable chamber with a volume of 1 m3” from Baalmann’s
Example 1, but not the power (2kW) expressly disclosed as being used with
that reactor of Example 1. Ex. 1004 ¶ 47. With regard to power density,
Petitioner relies on Baalmann’s general disclosure that “[t]he electrical
power input per chamber volume is set between 0.5 kilowatt/m3 and 5
kilowatt/m3.” Ex. 1004 ¶ 20. As Patent Owner points out, however, that
power density range is not tied to any particular reactor volume or plasma
zone volume. PO Resp. 19.
Baalmann also fails to expressly disclose the plasma zone volume of
the reactor in Example 1. See Ex. 1004 ¶¶ 47–48. To attempt to overcome
this absence of an express disclosure, Petitioner argues that, for the reactor
used in Example 1, the plasma zone volume and reactor volume are the same
based on the configuration of the electrodes in the reactor. Pet. 24–25.
Baalmann, however, does not expressly disclose the electrode configuration
of the reactor in Example 1. See Ex. 1004 ¶¶ 47–48. Instead, Petitioner
relies on Baalmann’s general disclosure of an embodiment wherein one
electrode is formed by the chamber wall itself. Pet. 24–25; Ex. 1004 ¶¶ 35,
61. In so doing, Petitioner ignores the fact that Baalmann also states that
“[t]wo opposite rod-shaped electrodes may also be used.” Ex. 1004 ¶ 35. In
view of this, we disagree with Petitioner’s conclusion that a person of
ordinary skill in the art “would have understood that chamber to be
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configured as described throughout the rest of the specification: with the
chamber wall serving as one of the electrodes.” Pet. 24.
Even if we were persuaded by Petitioner’s argument, the fact remains
that Petitioner’s anticipation challenge is based on the combination of
different features disclosed in separate portions of Baalmann. “Such picking
and choosing . . . has no place in the making of a 102, anticipation
rejection.” In re Arkley, 455 F.2d 586, 587–88 (CCPA 1972) (cited with
approval in Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1083 (Fed.
Cir. 2008)); see also Microsoft Corp. v. Biscotti, Inc., 878 F.3d 1052, 1069
(Fed. Cir. 2017) (stating that anticipation is not proven by multiple, distinct
teachings that the artisan might somehow combine to achieve the claimed
invention).
Additionally, we are not persuaded that the holding in Kennametal
warrants a different outcome here. See Pet. 27–28. In Kennametal, the prior
art specification expressly disclosed all of the claim limitations.
Kennametal, 780 F.3d at 1382. Here, however, Baalmann does not
expressly disclose the use of its entire power density range in combination
with a reactor having a particular overall volume or plasma zone volume.
Thus, unlike Kennametal, the question for purposes of anticipation here is
more than determining “whether the number of categories and components”
disclosed in the prior art is so large that the combination of limitations
“would not be immediately apparent to one of ordinary skill in the art.” Id.
As a result, we are not persuaded that a person of ordinary skill in the art
would at once envisage using a power input of 0.5 kW/m3 with a reactor
having a plasma zone volume of at least 0.5 m3, sufficient for purposes of
establishing anticipation, based on Baalmann’s general disclosure of using a
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power density in the range of 0.5 to 5 kW/m3, Baalmann’s disclosure of one
example using a plasma chamber having a volume of 1 m3, and Baalmann’s
general disclosure of various possible electrode configurations.
Petitioner bears the burden of demonstrating that the prior art
discloses all the elements of claim 1 within the four corners of the document,
and arranged as in the claim. NetMoneyIN, 545 F.3d at 1369. Petitioner has
not presented evidence sufficient to satisfy that burden. As a result,
Petitioner has not shown a by a preponderance of evidence that Baalmann
anticipates claim 1.
Claims 2, 3, 6, and 10–14 depend from claim 1, and, therefore,
include all of the limitations of claim 1. Ex. 1001, 10:29–12:3; see 37
C.F.R. § 1.75(c) (“Claims in dependent form shall be construed to include
all the limitations of the claim incorporated by reference into the dependent
claim.”). In view of our determination that Petitioner fails to establish that
Baalmann anticipates claim 1, we reach the same result for claims 2, 3, 6,
and 10–14.
E. Obviousness Challenges Based on Baalmann and Coulson
Petitioner contends claims 1–15 are unpatentable as obvious in view
of Baalmann and Coulson. Pet. 31–58; Reply 15–25. Petitioner also
contends that claims 16 and 17 are unpatentable as obvious in view of
Baalmann, Coulson, and Hillman. Pet. 58–61. Petitioner directs us to
portions of the references that purportedly teach or suggest all the limitations
of the challenged claims, and also relies on the testimony of Dr. Gleason to
support its arguments.
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1. Coulson (Ex. 1003)
Coulson discloses plasma polymerization experiments in an
“inductively coupled cylindrical glow discharge reactor” having a diameter
of 5 cm and a volume of 470 cm3. Ex. 1003, 2032. Coulson discloses using
1H, 1H, 2H, 2H-heptadecafluorodecylacrylate monomer (HDFDA) in its
experiments, and applying a voltage at 13.56 MHz at a power of 40W in a
pulsed manner at 20 μs on and 20000 μs off to generate plasma. Ex. 1003,
2032, 2034–35. Coulson describes its method as effective and capable of
yielding “low surface energy coatings which display no polar contribution
and exhibit excellent repellency toward low surface tension liquids.”
Ex. 1003, 2038.
2. Analysis
a. Claim 1
As noted above, claim 1 requires a plasma deposition chamber having
a plasma zone volume of at least 0.5 m3, and applying a voltage at a power
of from 0.001 to 500 w/m3. Ex. 1001, 10:22–28.
Petitioner argues that Baalmann describes plasma coating methods for
large substrates in large plasma chambers. Pet. 34. Petitioner points to the
reactor used in Baalmann Example 1 as one example of a large scale system,
arguing that a person of ordinary skill in the art would have recognized
the 1 m3 chamber used in Example 1 as a “relatively large chamber suited
for plasma coating large substrates.” Pet. 34. Additionally, Petitioner
argues that a person of ordinary skill in the art
would have been motivated to use Baalmann’s disclosed outer-
wall electrode configuration with large-scale chambers like
Baalmann’s 1 m3 chamber to maximize the plasma zone to cover
the full chamber volume because doing so would have
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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 (citing Ex. 1002 ¶ 125). Accordingly, Petitioner argues that
Baalmann disclosed the use of a chamber having a plasma zone volume of
1 m3, and thus at least 0.5 m3. Pet. 35.
Petitioner argues that Baalmann discloses applying power to the
plasma chamber at power densities “between 0.5 kW/m3 and 5 kW/m3,” and
notes that 0.5 kW/m3 equals 500 W/m3, as recited in claim 1. Pet. 37 (citing
Ex. 1004 ¶ 18; Ex. 1002 ¶ 106).
Petitioner asserts Coulson describes “similar power densities,” and
argues that a person of ordinary skill in the art would have calculated the
applied power density used in Coulson’s methods by dividing the average
power by the plasma zone volume. Pet. 37–38. Based on the “optimum
pulsed-plasma conditions” reported in Coulson, including the use of 40 W
pulses at intervals of 20 µs on and 20,000 µs off, Petitioner contends a
person of ordinary skill in the art would have calculated an average power of
approximately 0.04 W. Pet. 37–38. With regard to plasma zone volume,
Petitioner notes that Coulson discloses using a glow discharge reactor
having a volume of 470 cm3. Pet. 38. Petitioner states that a person of
ordinary skill in the art “would have known [that] the plasma zone volume
was where plasma was present and thus where polymer deposition could
take place, and contends that “[s]killed artisans . . . routinely reported
reaction volumes in terms of plasma-zone volume ‘because that was the
operative value of primary interest to other [persons of ordinary skill in the
art].’” Pet. 38 (quoting Ex. 1002 ¶ 133). Accordingly, Petitioner argues
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that, under its own construction of the term plasma zone, a person of
ordinary skill in the art “would have understood Coulson’s 470 cm3 ‘glow
discharge reactor’ volume as the volume that contained plasma during
operation.” Pet. 38. Petitioner thus argues that a person of ordinary skill in
the art would have concluded that Coulson’s 0.04 W average power was
applied over a 470 cm3 plasma zone, resulting in a power density of 85.1
W/m3. Pet. 37–38 (citing Ex. 1003, 2032, 2034–35; Ex. 1002 ¶¶ 132–134).
Petitioner next argues that a person of ordinary skill in the art
“desiring to prepare plasma-polymer coatings would have been aware of
both Baalmann and Coulson and would have been motivated to combine
Baalmann’s large-scale coating methods with Coulson’s HDFDA-based
coating methods.” Pet. 39. Petitioner contends that Coulson describes
optimum pulsed plasma conditions to obtain advantageous results with
HDFDA, and, as a result, a person of ordinary skill in the art would have
been motivated to use Coulson’s pulsed-field protocol and optimum power
density in Baalmann’s larger plasma chamber to replicate Coulson’s
reported optimum coating conditions. Pet. 39–48; see also Pet. 48 (“A
[person of ordinary skill in the art] would have been motivated to maintain
the same or similar reaction conditions within a larger reaction chamber that
were present in Coulson’s chamber during Coulson’s reported plasma
polymerization reactions, including power density and pressure, to preserve
the same effective results.”), 48–49 (“That would have included motivation
to maintain Coulson’s disclosed power density when scaling up to a larger
reaction volume to preserve the beneficial results Coulson reported at that
optimized power density.”). Petitioner also argues that a person of ordinary
skill in the art would have expected to succeed in incorporating Coulson’s
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use of HDFDA monomer and its optimized reaction conditions into
Baalmann’s larger-scale coating methods. Pet. 42–44.
Patent Owner argues, inter alia, that Petitioner’s calculation of power
density is flawed because Coulson discloses 470 cm3 as the volume of the
flow discharge reactor, not the plasma zone volume of the reactor. PO
Resp. 43. Patent Owner argues that plasma zone volume is distinct from
reactor volume, and disagrees that a person of ordinary skill in the art would
have understood the plasma zone volume in Coulson’s reactor to be 470 cm3
based on Coulson’s disclosure of a glow discharge reactor having a volume
of 470 cm3. PO Resp. 42–43. Patent Owner contends that two references
Dr. Gleason relies upon (Lee6 and Felts7) actually undermine her testimony
and show that “the established convention” is the volume of a plasma zone is
distinct from the reactor volume. PO Resp. 43. Patent Owner also directs us
to an additional reference (Yasuda8) that purportedly shows a tubular reactor
wherein plasma did not extend throughout the entire reactor volume. PO
Resp. 43–44.
In its Reply, Petitioner does not dispute that Coulson fails to expressly
disclose a plasma zone volume, but asserts that a person of ordinary skill
would have inferred that Coulson’s plasma zone volume encompasses the
full volume of the 470 cm3 reactor. Reply 16. Petitioner argues that in an
obviousness analysis, “a court can take account of the inferences and

6 US 4,827,870, issued May 9, 1989 (Ex. 1006).
7 Felts and Grubb, “Commercial-scale application of plasma processing for
polymeric substrates: From laboratory to production,” J. Vac. Sci. Technol.
A 10(4), July/Aug 1992 (Ex. 1015).
8 Yasuda, PLASMA POLYMERIZATION, Academic Press, Inc., 1985 (Ex. 2015).
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creative steps that a person of ordinary skill in the art would employ.” Reply
15–16 (quoting KSR, 550 U.S. at 418). Petitioner also argues that “the
obviousness analysis includes ‘logic, judgment, and common sense available
to the [person of ordinary skill in the art] that do not necessarily require
explication in any reference or expert opinion.’” Reply 16 (quoting Perfect
Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009)).
Petitioner maintains that Felts and Lee support its position because
they “show only that when the plasma volume is distinct from the reactor
volume, [persons of ordinary skill in the art] generally point out and report
the plasma volume because that is most pertinent.” Reply 17. According to
Petitioner, “[w]hen chamber volume and plasma volume are the same,
however, no distinction is necessary.” Reply 17 (citing Ex. 2010 ¶ 53;
Ex. 1002 ¶ 133). Petitioner also argues that Patent Owner’s own exhibits
support Petitioner’s arguments because they report that plasma “could be
extended to both ends” of a tubular reaction chamber (Ex. 2015) and plasma
extending “throughout the discharge tube” of a glass-tube reactor (Ex. 2007,
362). Reply 18–19. According to Petitioner, these references support an
inference that plasma fills Coulson’s reactor tube, which was operated under
similar conditions, such that Coulson’s plasma zone extends throughout the
full volume of the plasma chamber. Reply 18–20.
In its Sur-reply, Patent Owner argues that Petitioner improperly
attempts to “backfill missing details regarding Coulson’s plasma zone”
through expert testimony about what a person of ordinary skill in the art
would have understood about the plasma zone of Coulson. Sur-reply 18–19
(distinguishing KSR and Perfect Web). Patent Owner also argues its
declarant, Dr. Parsons, did not agree with Dr. Gleason’s conclusions
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regarding what a person of ordinary skill in the art would have understood
from Coulson, and testified that Coulson’s disclosure does not permit a
person of ordinary skill in the art to determine plasma zone size (and
therefore power density). Sur-reply 19 (citing PO Resp. 8; Ex. 2010 ¶ 72).
Patent Owner notes that Dr. Gleason testified only that Felts and Lee suggest
persons of ordinary skill in the art “typically specify plasma zone volume”
(Ex. 1022 ¶ 25), and therefore there is no support for Petitioner’s argument
that when a plasma zone volume is not reported, it is necessarily the same as
reactor volume. Sur-reply 19–20.
Patent Owner also argues that Petitioner’s attempt to compare
Coulson’s plasma zone to those in other prior art experiments fails because
the size of a plasma zone depends on several variables, including, but not
limited to reactor and electrode configuration. Sur-reply 20 (citing Ex. 2010
¶¶ 55, 77; Ex. 2004, 293; Ex. 2011, 27:20–28:4). According to Patent
Owner, “Coulson does not specify any details regarding the configuration of
the reactor (other than volume and an unspecific diameter (Ex. 2017, 79:2–
7)) or electrode(s) used.” Sur-reply 21. Finally, Patent Owner notes that
Dr. Gleason did not perform any experiments to verify her opinions
regarding Coulson’s plasma zone. Sur-reply 21.
After considering the parties’ arguments and evidence developed
during the full trial, we are not persuaded by Petitioner’s arguments that a
person of ordinary skill in the art would have inferred that Coulson’s plasma
zone volume was coextensive with the reactor volume. Reply 15–16;
Pet. 38. Petitioner’s primary support for this argument is Dr. Gleason’s
testimony that skilled artisans “routinely reported reaction volumes in terms
of plasma-zone volume because that was the operative value of primary
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interest to other [persons of ordinary skill in the art].’” Pet. 38; Ex. 1002
¶ 133. As noted in our Institution Decision, Petitioner and Dr. Gleason
attempt to correlate “plasma-zone volume” with “reaction volumes” reported
by persons of ordinary skill in the prior art. Inst. Dec. 25. Coulson,
however, reports a “reactor” volume, not a “reaction” volume. Ex. 1003,
2032.
In our Institution Decision, we indicated that this distinction between
“reactor” and “reaction” volume is significant because our review of the
references Dr. Gleason relies upon show that the “reaction” volume is not
necessarily coextensive with “reactor” volume. Inst. Dec. 25. For example,
Dr. Gleason cites Lee and Felts in support of her opinion that skilled artisans
“routinely reported reaction volumes in terms of plasma-zone volume.”
Ex. 1002 ¶ 133 (emphasis added). With regard to Lee, Dr. Gleason states
that the inventors used the term “reactor zone” at column 4, lines 39–48 to
describe the area where the plasma and film-forming process occurred, i.e.,
the reaction volume. Ex. 1002 ¶ 133. Although this may be true, it appears
to us from Lee that the “reactor zone” refers to “zone 44,” which occupies
only the space between two electrodes inside reaction chamber 18.
Ex. 1006, 2:50, 4:1–2 (“Electrostatic side shields 48 serve to confine the
plasma in gap zone 44 between electrodes 28 and 34.”); Fig. 2 (depicting
zone 44 with an arrow pointing between electrodes 28 and 34 inside reaction
chamber 18). Therefore, the volume of the “reactor zone” where the plasma
and film forming process occurs in Lee is not coextensive with the volume
of the reactor (reaction chamber 18) itself.
With regard to Felts, Dr. Gleason states that the authors described the
plasma chamber size in terms of “process plasma volume,” which a person
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of ordinary skill in the art would have understood to be the volume of the
plasma zone. Ex. 1002 ¶ 133. First, we note that Felts uses the term
“plasma zone” (Ex. 1015, 1677), but neither Petitioner nor Dr. Gleason
address the meaning of that term or its comparative size in relation to either
the “process plasma volume” or the reactor volume. Next, even assuming
that a person of ordinary skill in the art would have understood “process
plasma volume” to refer to the volume of the plasma zone, the reactor shown
in Figure 1 of Felts depicts a “process plasma volume” that appears to be
smaller than the volume of the entire reactor.
For example, Figure 1 of Felts is reproduced below:

Figure 1 of Felts provides a schematic depiction of the R-9 coater used in
certain experiments. Ex. 1015, 1675–1676. In describing the coater shown
in Figure 1, Exhibit 1015 states: “The roll-to-roll configuration allowed
free-spanning of thin polymeric substrates through the process plasma with
a source to substrate distance of 2 in.” Ex. 1015, 1676 (emphasis added).
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Based on this description, it would appear that the shaded portion of Figure
1 corresponds to the “process plasma,” and, therefore, Figure 1 illustrates
that the process plasma volume is smaller than the volume of the entire
reactor.
Testimony from Patent Owner’s declarant Dr. Parsons further
supports our finding that Lee and Felts disclose reactor chambers wherein
the volume of the plasma zone is less than the volume of the reactor
chamber itself. Ex. 2010 ¶ 54 (discussing Felts), ¶ 60 (discussing Lee).
Notably, Petitioner’s own arguments in the Reply suggest that the plasma
volume in Lee and Felts is distinct from the reactor volume. See Reply 17
(arguing that Lee and Felts “show only that when the plasma volume is
distinct from the reactor volume, [persons of ordinary skill in the art]
generally point out and report the plasma volume” (emphasis added)). Thus,
even if we were to agree with Dr. Gleason’s statement that, based on Lee
and Felts, persons of ordinary skill in the art routinely reported reaction
volumes in terms of plasma zone volumes (Ex. 1002 ¶ 133), the evidence of
record shows that reaction volume/plasma zone volume and the volume of
the reactor itself are not necessarily coextensive. This undermines Petitioner
and Dr. Gleason’s assertion that a person of ordinary skill in the art would
have inferred Coulson’s plasma zone had a volume of 470 cm3 based on
Coulson’s disclosure that its reactor had a volume of 470 cm3. Pet. 38;
Reply 16; Ex. 1002 ¶ 133.
Nor are we persuaded by Petitioner’s assertion that “[w]hen chamber
volume and plasma volume are the same, . . . no distinction is necessary.”
Reply 17. Petitioner cites to paragraph 133 of the Gleason Declaration and
paragraph 53 of the Parsons Declaration to support this statement. Reply 17.
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Dr. Gleason, however, does not refer to “chamber volume” in paragraph
133, and only discusses references having plasma zones that are different
from reactor volumes. Further, as Patent Owner points out, Dr. Gleason
testified that these references show only that persons of ordinary skill in the
art typically specify the more relevant plasma zone when it is smaller than
the chamber volume. Sur-reply 19–20. This suggests that persons of
ordinary skill in the art do not always specify plasma zone volume when the
plasma zone volume is smaller than the chamber volume. Thus, although a
distinction may not be necessary in all scenarios, the evidence of record fails
to establish that the absence of a distinction between chamber volume and
plasma zone volume means that it would have been obvious that chamber
volume and plasma volume are coextensive.
Petitioner’s other purported support for its assertion is Dr. Parsons’s
statement: “If the plasma region or zone encompassed the whole plasma
reactor, then no distinction between these regions would be necessary.”
Ex. 2010 ¶ 53. This statement, however, was made in reference to different
regions of a specific reactor discussed in one of Dr. Gleason’s patents, in the
context of supporting Patent Owner’s construction of the term “plasma
zone,” where Patent Owner and Dr. Parsons contend that “[i]nvestigators
commonly identify a plasma zone as a “plasma region” or “glow region” as
the region designed and controlled for deposition or polymerization within a
plasma reactor.” Ex. 2010 ¶ 53. In view of this, we do not consider
Dr. Parsons’s statement to demonstrate a universal understanding by persons
of skill in the art that when a plasma zone volume is not reported, it must be
the same as the reactor volume. Indeed, such an understanding is further
contravened by Dr. Parson’s statement in the same paragraph that a person
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of ordinary skill in the art “would know that the volume of the plasma zone
is commonly less than the volume of the reactor.” Ex. 2010 ¶ 53.
Petitioner’s attempts to establish what a person of ordinary skill in the
art would have inferred about the size of the plasma zone in Coulson’s
reactor based on different reactors used in the experiments described in other
references9 is equally unavailing. Reply 17–20 (discussing Ex. 2007 and
2015). It is undisputed that the plasma zone volume of a reactor depends on
several variables, including, but not limited to, reactor configuration and
electrode configuration. Ex. 2010 ¶¶ 55, 77; Ex. 2011 27:20–28:12. As
Patent Owner points out, and we agree, Coulson does not provide sufficient
specific details regarding the configuration of its reactor or electrodes used.
Reply 21; Ex. 1003, 2032; Ex. 2010 ¶ 72; Ex. 2017, 78:6–15; 79:2–7.
For all of the foregoing reasons, we are not persuaded by Petitioner’s
argument that a person of ordinary skill in the art would have inferred the
volume of the plasma zone10 in Coulson is 470 cm3 based on Coulson’s
disclosure of a “glow discharge reactor” having a volume of 470 cm3.
Pet. 38; Reply 15–16. In view of this, we are likewise not persuaded that
Coulson discloses a power density of 85.1 W/m3, because Petitioner’s

9 Dr. Gleason confirmed that she did not perform any experiments to verify
her opinions regarding Coulson’s plasma zone. Ex. 2017, 80:10–18.
10 As noted above, Petitioner presented its argument in the context of its
proposed construction of plasma zone. Petitioner did not present an
alternative argument supported by sufficient evidence addressing the volume
of Coulson’s plasma zone based on Patent Owner’s proposed construction of
plasma zone. Accordingly, we agree with Patent Owner’s assertion that we
do not need to expressly construe the term plasma zone to resolve this issue.
Sur-reply 1.
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argument that Coulson discloses this power density is based on its assertion
that Coulson has a plasma zone volume of 470 cm3. Pet. 38.
This finding is fatal to Petitioner’s obviousness challenge of claim 1
based on the combined teachings of Baalmann and Coulson because
Coulson’s purported disclosure of using a power density of 85.1 W/m3 is an
essential component of Petitioner’s obviousness challenge. An obviousness
determination requires finding both “that a skilled artisan would have been
motivated to combine the teachings of the prior art . . . and that the skilled
artisan would have had a reasonable expectation of success in doing
so.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
1367-68 (Fed. Cir. 2016). In attempting to establish a person of ordinary
skill in the art would have had reason to combine the teachings of Baalmann
and Coulson, and would have had a reasonable expectation of success in
doing so, Petitioner repeatedly refers to using Coulson’s optimized reaction
conditions, including power density, in Baalmann’s larger reactor. Pet. 48
(stating that a person of ordinary skill in the art “would have been motivated
to maintain the same or similar reaction conditions within a larger reaction
chamber that were present in Coulson’s chamber during Coulson’s reported
plasma polymerization reactions, including power density and pressure, to
preserve the same effective results.”), 48–49 (“That would have included
motivation to maintain Coulson’s disclosed power density when scaling up
to a larger reaction volume to preserve the beneficial results Coulson
reported at that optimized power density.”); Reply 23 (referring to the
“straightforward, compelling obviousness case set forth in the petition” that
a person of ordinary skill in the art “would have expected to succeed
performing Coulson’s reactions on a larger scale in view of Baalmann”);
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23 (“The petition explained why a POSA would have modified Baalmann to
use Coulson’s HDFDA monomer and reaction conditions to produce
coatings with a reasonable expectation of success” ), 24 (stating the Petition
“explained why a POSA would have expected success using known
parameters from Coulson in an established large-scale apparatus”). During
the oral hearing, counsel for Petitioner confirmed its obviousness positions
depend on using Coulson’s power density. Tr. 20:10–21:16. Accordingly,
Petitioner’s failure to demonstrate adequately that Coulson discloses or
suggests a power density of 85.1 W/m3 undermines its reason to combine
and reasonable expectation of success arguments.
Petitioner’s argument that Baalmann discloses the claimed power
density (Pet. 37), even if we were to agree with it, does not cure the
deficiency in Petitioner’s obviousness challenges based on Baalmann and
Coulson. As the Supreme Court held in KSR, “a patent composed of several
elements is not proved obvious merely by demonstrating that each of its
elements was, independently, known in the prior art.” KSR, 550 U.S. at 418;
see also Section II.F., infra (discussing obviousness in view of Baalmann
alone).
For all of the foregoing reasons, we find Petitioner has not
demonstrated, by a preponderance of evidence, that claim 1 is unpatentable
as obvious in view of the combined teachings of Baalmann and Coulson.
b. Claims 2–17
Claims 2–17 depend from claim 1, and therefore contain all of the
limitations of claim 1. For these claims, Petitioner relies on its analysis of
claim 1. Pet. 51–61. Thus, for the reasons discussed above in connection
with claim 1, we find Petitioner has not demonstrated, by a preponderance of
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evidence, that claims 2–17 are unpatentable as obvious in view of the
combined teachings of Baalmann and Coulson, or Baalmann, Coulson, and
Hillman.
F. Obviousness Based on Baalmann Alone
In the Institution Decision, we determined that even though
Petitioner’s arguments regarding its obviousness challenge are included in
the section titled “Claims 1–15 would have been obvious over the combined
teachings of Baalmann and Coulson,” Petitioner presented evidence
demonstrating that Baalmann alone discloses or suggests the limitations of
claim 1, and 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. Inst. Dec. 18–23. We reached a similar
determination for claims 2, 3, 6, and 10–14, which depend from claim 1.
Inst. Dec. 23.
Patent Owner argues Petitioner never asserted a ground of
obviousness based on Baalmann alone in the Petition, and that the Board
does not have the authority to invalidate claims based on Baalmann alone.
PO Resp. 29–31; Sur-reply 6–7. Patent Owner further argues that even if
Petitioner had asserted a ground of obviousness based on Baalmann alone,
Baalmann does not disclose a plasma zone or power density range within the
range of claim 1, and Petitioner fails to show a person of ordinary skill in the
art would have been motivated to combine the distinct disclosures of
Baalmann with a reasonable expectation of success. PO Resp. 31–42; Sur-
reply 13–18.
Petitioner argues that its obviousness grounds in the Petition included
an obviousness argument based on Baalmann alone, and that it established
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that Baalmann provided a motivation to perform the claimed methods with a
reasonable expectation of success. Reply 11–15 (citing Pet. 9–10, 31–39,
43–44).
After considering the parties’ arguments and evidence, we agree with
Patent Owner that Petitioner fails to show a person of ordinary skill in the art
would have been motivated to combine the distinct disclosures of Baalmann
with a reasonable expectation of success.11
First, we note that when Dr. Gleason was asked about whether she
addressed the issue of a person of ordinary skill in the art having a
reasonable expectation of success in combining the distinct disclosures of
Baalmann, she stated: “I don’t believe we gave that statement, so I can’t
point you to it.” Ex. 2011, 120:1–9; PO Resp. 41. This lack of testimony is
relevant because, according to the Federal Circuit’s decision in In re Stepan,
even a single-reference obviousness determination “requires finding
both ‘that a skilled artisan would have been motivated to combine the
teachings of the prior art . . . and that the skilled artisan would have had a
reasonable expectation of success in doing so.’” In re Stepan, 868 F.3d
1342, 1346 (Fed. Cir. 2017) (quoting Intelligent Bio-Sys., 821 F.3d at 1367–
68). We consider the Stepan holding to be especially pertinent here, where,
as discussed above in Section II.D.2, we consider Baalmann to disclose
different features in separate portions of Baalmann. See Section II.D.2,
supra.

11 Because we find in Patent Owner’s favor on this issue, and because we
already considered similar arguments regarding whether we have the
authority to invalidate claims based on Baalmann alone in Patent Owner’s
Request for Rehearing (Paper 13), which we denied (Paper 16), we decline
to address the issue again here.
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Petitioner contends that despite the lack of testimony from its own
expert, the Petition demonstrated a person of ordinary skill in the art would
have had a reasonable expectation of success “when working within
Baalmann’s expressly disclosed parameters” because the Petition
“emphasized that Baalmann itself taught its methods were flexible for
coating substrates of ‘any desired size’ and that a [person of ordinary skill in
the art] would have understood those methods would work in various
chamber sizes.” Reply 14 (citing Pet. 34, 46–47, 49–50).
We disagree. As noted above, claim 1 requires both a particular
power density and a particular plasma zone volume. Ex. 1001, 10:24–28.
One of the “expressly disclosed parameters” of Baalmann’s method is
setting the electrical power input per chamber volume, i.e., power density, to
between 500 W/m3 and 5000 W/m3. Ex. 1004 ¶¶ 18, 20. Baalmann,
however, does not expressly discuss plasma zone volume or link that entire
range of power density to any particular chamber size or plasma zone
volume.
Instead, Petitioner’s argument that a person of ordinary skill in the art
would understand Baalmann’s methods would work in various chamber
sizes is based on Baalmann’s disclosure that its methods are flexible for
coating substrates of any size. Pet. 34. In this regard, Petitioner argues a
person of ordinary skill in the art would have understood Baalmann’s
methods could have been used to treat “large substrates” in “large plasma
chambers.” Pet. 34. Additionally, Petitioner contends that the reactor used
in Baalmann Example 1 is a “large-scale” reactor based on its description of
having an evacuable chamber with a volume of 1 m3. Pet. 34.
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It is undisputed, however, that Baalmann used a power of 2kW in
Example 1. In Example 1, the volume of the reactor is 1 m3. Thus, the
power input per chamber volume applied to the 1 m3 reactor of Example 1 is
2 kW/m3. Petitioner argues that the plasma zone volume is coextensive with
the reactor volume such that the 1 m3 reactor of Example 1 would have a 1
m3 plasma zone. Pet. 34–35. Thus, the power input per chamber volume
would be equal to the power input per plasma zone volume, making it four
times higher (i.e., 2 kW/m3) than the upper limit of the claimed plasma
power density range of 500 W/m3.
Therefore, even though Baalmann generally discloses a broad range of
power densities, Baalmann only expressly teaches the use of a power density
outside the claimed range for a chamber that purportedly has a plasma zone
volume within the claimed range. Ex. 1004 ¶ 48. Petitioner would have us
overlook this express, specific disclosure in Example 1 of Baalmann in favor
of Baalmann’s more general disclosure of using a broad range of power
densities, and Baalmann’s general flexibility regarding substrates of any
desired size. Pet. 34; Ex. 1002 ¶ 107. But following Petitioner’s logic that
Baalmann’s flexibility in treating substrates of any desired size would have
led a person of ordinary skill in the art to understand that Baalmann’s
methods could be used in chambers having various sizes, a person of
ordinary skill in the art would have understood Baalmann to disclose a range
of power densities associated with any chamber that could hold these
substrates. And, in view of Baalmann’s disclosure that substrates of “any
desired size” includes “insulators of microelectronics up to high-voltage
insulators of several meters in length,” the number of chambers that could
hold such substrates is extremely large. Ex. 1004 ¶ 13; see also Ex. 1004 ¶
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42 (“A high-voltage insulator may have dimensions from just a few
centimeters up to several meters.”).
According to the Federal Circuit’s holding in Stepan, “to have a
reasonable expectation of success, one must be motivated to do more than
. . . try each of numerous possible choices until one possibly arrived at a
successful result.” Stepan, 868 F.3d at 1347 (quoting Pfizer, Inc. v. Apotex,
Inc., 480 F.3d 1348, 1365 (Fed. Cir. 2007)). Absent some additional
guidance from Baalmann regarding a correlation between power density and
chamber volume/plasma zone volume, a person of ordinary skill in the art
would have had to try numerous possible choices of power density and
chamber volume/plasma zone volume to successfully arrive at the specific
combination of power density and plasma zone volume recited in the
challenged claims. Id. Petitioner, however, does not direct us to such
guidance in Baalmann, or to sufficiently persuasive expert testimony on this
matter in the context of an obviousness challenge based on Baalmann alone.
See PO Resp. 40 (Patent Owner arguing that there is no “indication from
Baalmann that 500 W/m3 would be suitable in connection with larger
chambers”); Reply 14 (citing Pet. 34, 46–47, 49–50); see also KSR, 550 U.S.
at 421, 127 S.Ct. 1727 (“A factfinder should be aware, of course, of the
distortion caused by hindsight bias and must be cautious of arguments reliant
upon ex post reasoning.”).
Petitioner directs us to pages 46–47 and 49–50 of the Petition in
support of its argument regarding a reasonable expectation of success.
Reply 14. These pages, however, appear as part of Petitioner’s arguments
regarding the reasons why a person of ordinary skill in the art would have
combined the teachings of Coulson and Baalmann, and appear intertwined
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with Petitioner’s discussion of scaling up Coulson’s methods in view of
Baalmann’s disclosures. See Pet. 39–50. We decline to consider these
arguments when addressing whether the Petition provided a reasonable
expectation of success based on Baalmann alone. We instituted inter partes
review based on obviousness over Baalmann alone because we determined
that Petitioner demonstrated, in the Petition, that Baalmann alone disclosed
the limitations of claim 1. See Realtime Data LLC v. Iancu, 912 F.3d 1368,
1371–73 (Fed. Cir. 2019). We cannot apply Petitioner’s Baalmann-Coulson
obviousness reasoning to a ground based on obviousness over Baalmann
alone. See Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1335
(Fed. Cir. 2020) (holding “the Board erred by instituting inter partes review
based on a combination of prior art references not advanced in [the]
petition.”). The same is true for Petitioner’s arguments regarding Patent
Owner’s statements made during prosecution of a foreign application. Reply
14–15; Pet. 43–44.
For all of the foregoing reasons, we find Petitioner has failed to
establish by a preponderance of evidence that a person of ordinary skill in
the art would have been motivated to combine the distinct disclosures of
Baalmann with a reasonable expectation of success. Accordingly, Petitioner
has failed to establish by a preponderance of evidence that claim 1 is
unpatentable as obvious over Baalmann alone.
Claims 2, 3, 6, and 10–14 depend from claim 1, and, therefore,
include all of the limitations of claim 1. Ex. 1001, 10:30–12:3. In view of
our determination that Petitioner fails to establish that claim 1 is
unpatentable as obvious over Baalmann alone, we reach the same result for
claims 2, 3, 6, and 10–14.
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III. PETITIONER’S MOTION TO EXCLUDE
Petitioner filed a Motion to Exclude Exhibits 2005, 2006, 2008, and
2009 in their entirety, and the portions of Exhibits 2010 and 2016 that
discuss or rely on those exhibits. Paper 26.
Because we do not rely on Exhibits 2005, 2006, 2008, 2009 or the
portions of Exhibits 2010 or 2016 that rely on those exhibits in this Final
Written Decision, we dismiss Petitioner’s motion as moot. See Patent Trial
and Appeal Board Consolidated Trial Practice Guide 79–80 (Nov. 2019)
(“In the Board’s experience, consideration of the objected-to evidence is
often unnecessary to resolve the patentability of the challenged claims, and
the motion to exclude is moot.”).
IV. CONCLUSION
For the foregoing reasons, we determine Petitioner has failed to show,
by a preponderance of the evidence, that claims 1–17 of the ’070 patent are
unpatentable over the prior art of record.
We also dismiss as moot Petitioner’s Motion to Exclude.
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Patent 8,389,070 B2

36
In summary:
Claim(s)
Challenged
35
U.S.C. § Reference(s)
Claims
Shown
Unpatentable
Claim(s) Not
Shown
Unpatentable
1–3, 6, 10–14 102 Baalmann

1–3, 6, 10–14
1–15 103 Baalmann,
Coulson
1–15
16, 17 103 Baalmann,
Coulson,
Hillman

16, 17
Overall
Outcome 1–17

V. ORDER
It is hereby
ORDERED that, Petitioner has not shown, by a preponderance of the
evidence, that claims 1–17 of the ’070 patent are unpatentable; and
FURTHER ORDERED that, because this is a final written decision,
parties to this proceeding seeking judicial review of our Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

IPR2020-00478
Patent 8,389,070 B2

37
For PETITIONER:

Andrew Dufresne
Han-Wei Chen
Nathan Kelley
Mengke Xing
PERKINS COIE LLP
dufresne-ptab@perkinscoie.com
chen-ptab@perkinscoie.com
kelley_nathan-ptab@perkinscoie.com
xing-ptab@perkinscoie.com

For PATENT OWNER:

Paul Henkelmann
Timothy Maloney
FITCH EVEN TABIN & FLANNERY LLP
phenkelmann@fitcheven.com
tpmalo@fitcheven.com