Rigetti & Co., Inc.

Patent Trials and Appeals Board

Aug 11, 2020

IPR2020-00494 (P.T.A.B. Aug. 11, 2020)

Trials@uspto.gov Paper 13
571-272-7822 Date: August 11, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

IBM CORPORATION,
Petitioner,

v.

RIGETTI & COMPANY, INC.,
Patent Owner.
____________

IPR2020-00494
Patent 9,836,699 B1
____________

Before KEVIN F. TURNER, WESLEY B. DERRICK, and
JOHN F. HORVATH, Administrative Patent Judges.

DERRICK, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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I. INTRODUCTION
IBM Corporation (“Petitioner”) filed a Petition requesting an inter
partes review of claims 1, 7–13, 18–20, 22–28, 30, 38, and 40–43 of U.S.
Patent No. 9,836,699 B1 (“the ’699 patent,” Ex. 1001). Paper 51 (“Pet.”).
Patent Owner Rigetti & Company, Inc., filed a Preliminary Response. Paper
10 (“Prelim. Resp.”). Petitioner also filed a second petition requesting an
inter partes review of claims 1–6, 14–17, 21, 23–26, 29, 31–39, 41, and 43
of the ’699 patent (IPR2020-00495, Paper 1) and a Notice for Filing Two
Petitions (Paper 2). We authorized additional briefing on certain issues set
forth in the Preliminary Response, and Petitioner in turn filed a Reply to
Patent Owner’s Preliminary Response (Paper 11, “Prelim. Reply”) and
Patent Owner in turn filed a Sur-Reply to Petitioner’s Reply (Paper 12).
We have authority to determine whether to institute an inter partes
review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). We may not institute an inter
partes review “unless . . . there is a reasonable likelihood that the petitioner
would prevail with respect to at least 1 of the claims challenged in the
petition.” 35 U.S.C. § 314(a). Applying that standard, for the reasons set
forth below, we decline to institute an inter partes review because Petitioner
has not shown a reasonable likelihood that it would prevail in establishing
the unpatentability of any of claims 1, 7–13, 18–20, 22–28, 30, 38, and 40–
43.

1 Paper 5 is a corrected petition. Petitioner’s originally-filed petition
(Paper 3), filed January 31, 2020, was accorded a filing date (Paper 4), but
Petitioner was required to correct its failure to comply with the word limits
for petitions within five business days (id. at 2). Paper 5 was timely filed,
along with a reply setting forth that the corrected petition complies with the
word limit requirement. Paper 6.
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II. BACKGROUND
A. Related Proceedings
The parties indicate that an additional petition was filed concurrently
for inter partes review of a different, partially overlapping subset of claims
of the ’699 patent, i.e., in IPR2020-00495, and that there are no additional
related matters known. Pet. 9; Paper 2, 1; Paper 8.
B. The ’699 Patent (Ex. 1001)
The ’699 patent is titled “Microwave Integrated Quantum Circuits
With Interposer,” and is directed to a quantum computing apparatus
including a quantum circuit device and an interposer having a
connectorization layer for connecting the apparatus to a plurality of cables.
Ex. 1001, [54], [57]. Figure 19, reproduced below, depicts quantum
computing apparatus 1900 in which interposer 1920 also includes
intermediate layer 1930 between quantum circuit device 1910 and
connectorization layer 1940, and in which the interposer connects the
quantum circuit device 1910 to a series of cables 1950. Id., Fig. 19, 46:41–
46, 47:8–18.
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Id., Fig. 19 (depicting a schematic representation of a quantum computing
apparatus).
C. Claimed Subject Matter
There are two independent claims: Claims 1 and 38, reproduced
below.
1. A quantum computing apparatus, comprising:
a quantum circuit device; and
an interposer comprising:
a connectorization layer comprising a plurality of terminals for
connecting the quantum computing apparatus to a
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corresponding plurality of cables and a plurality of signal lines
electrically coupled, via electrical contacts, to the plurality of
terminals; and
at least one intermediate layer between the quantum circuit
device and the connectorization layer, the at least one
intermediate layer comprising an integrated circuit layer, the at
least one intermediate layer being electrically coupled to the
signal lines of the interposer,
wherein the interposer is configured to supply the quantum
circuit device, during operation of the quantum computing
apparatus, at least control signals and readout signals to and
from the plurality of cables.
Ex. 1001, 54:20–36.
38. A method of forming an assembly for a quantum
computing apparatus, the method comprising:
attaching an interposer to a circuit wafer for a quantum circuit
device, the interposer comprising an integrated circuit layer
and a connectorization layer comprising a plurality of
terminals for connecting the quantum computing apparatus to
a corresponding plurality of cables, the interposer being
attached so that the integrated circuit layer is between the
circuit wafer and the connectorization layer,
wherein the interposer comprises a plurality of signal lines
electrically coupled, via electrical contacts, to the circuit
wafer to supply, during operation of the quantum computing
apparatus, at least control signals and readout signals to and
from the plurality of cables.
Id. at 56:34–48.
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D. Prior Art Relied Upon
Petitioner relies upon the references, and dates, listed below (Pet. 13–
14 (citing Exs. 1004–1008, 1010, 1011, 1013):
Reference Date Exhibit No.
WO 2014/163728 A2 (“Schoelkopf”) Oct. 9, 2014 1005
Abdo et al., Josephson Directional
Amplifier for Quantum Measurement of
Superconducting Circuits, PRL 112,
167701 (2014) (“Abdo”)
May 20, 2014 1006
US 6,614,106 B2 (“Matsuo”) Sept. 2, 2003,
filed Sept. 21,
2003
1007
Frunzio et al., Fabrication and
Characterization of Superconducting
Circuit QED Devices for Quantum
Computation, IEEE Transactions on
Applied Superconductivity, Vol. 15,
No. 2 (June 2005) (“Frunzio”)
Oct. 4, 2004 1008
Schmitt, Multiplexed readout of
transmon qubits with Josephson
bifurcation amplifiers, Physcial Review
A 90, 062333 (2014) (“Schmitt”)
Sept. 1, 2014 1010
US 8,937,255 B1 (“Dotsenko”) Jan. 20, 2015,
priority claim to
Aug. 18, 2007
1011
US 9,231,181 B1 (“Thom”) Jan. 5, 2016,
filed Aug. 28,
2012
1013
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The status of these references as prior art printed publications is not
contested by Patent Owner (see generally Prelim. Resp.).
E. The Asserted Grounds of Unpatentability
Petitioner challenges the patentability of the claims on the following
grounds, relying on the Declaration from Andrew A. Houck, Ph.D.
(Ex. 1003). Pet. 13, 15–106.
Challenged Claims 35 U.S.C. §2 Reference(s)/Basis
1, 13, 19, 20, 22, 27,
28, 38
103 Schoelkopf, Matsuo, Frunzio
7, 8, 10 103 Schoelkopf, Matsuo, Frunzio,
Abdo
9 103 Schoelkopf, Matsuo, Frunzio,
Schmitt
11, 12, 18, 30, 40, 42 103 Schoelkopf, Matsuo, Frunzio,
Dotsenko
23–26, 41, 43 103 Schoelkopf, Matsuo, Frunzio,
Thom
III. ANALYSIS
A. Level of Ordinary Skill in the Art
Petitioner contends that a person of ordinary skill in the art “would
include someone who had a Master’s degree in Electrical and/or Computer
Engineering, Physics, or equivalent training, and approximately three years

2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
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of experience working in industry with a focus on quantum computing
circuits,” and that a “[l]ack of work experience can be remedied by
additional education, and vice versa.” Pet. 12 (citing Ex. 1003 ¶¶ 1–22, 37–
41).
Patent Owner expressly “applies Petitioner’s definition of a [person of
ordinary skill in the art]” in its Preliminary Response, while “reserv[ing] the
right to provide its own definition” later. Prelim. Resp. 21.
On this record, we discern no error in the contended level of skill and
note that it is not contested at this stage of the proceeding. Accordingly, we
apply the identification of a person of ordinary skill as set forth by
Petitioner.
B. Claim Construction
For petitions filed on or after November 13, 2018, a claim shall be
construed using the same claim construction standard that would be used to
construe the claim in a civil action under 35 U.S.C. § 232(b), including
construing the claim in accordance with the ordinary and customary
meaning of such claim as understood by one of ordinary skill in the art and
the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b)
(2019). Thus, we apply a district court-type claim construction.
In applying a district court-type claim construction, we are guided by
the principle that the words of a claim “are generally given their ordinary
and customary meaning,” as understood by a person of ordinary skill in the
art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303,
1312–13 (Fed. Cir. 2005) (en banc) (citation omitted). “In determining the
meaning of the disputed claim limitation, we look principally to the intrinsic
evidence of record, examining the claim language itself, the written
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description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
(citing Phillips, 415 F.3d at 1312–17). There is a “heavy presumption,”
however, that a claim term carries its ordinary and customary meaning. CCS
Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)
(citation omitted).
We are also guided by the principle that we only construe claim terms
if, and to the extent, it is necessary for the purpose of the proceeding, here,
to determine whether to institute an inter partes review. See, e.g., Wellman,
Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim
terms need only be construed ‘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)).
Petitioner contends that “no claim term requires express construction
for the Board to evaluate the patentability of the claims” on the basis of “the
prior art assertions presented,” and that, thus, the “Petition analyzes the
claims consistent with ordinary and customary meaning as would be
understood by a [person of ordinary skill in the art] in light of the
specification.” Pet. 12–13 (citing Ex. 1003 ¶ 42).
Patent Owner does not set forth an express construction of any claim
term, stating that “[f]or purposes of this Preliminary Response, [Patent
Owner] analyzes the claim terms consistent with their plain and ordinary
meaning,” while also “reserv[ing] the right to proffer its own construction
. . . should the need arise.” Prelim. Resp. 21.
Based on the current record, we decline to construe any term of the
’699 patent, except to the limited extent set forth in our analysis of the
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grounds, because it is not necessary to do so in reaching our decision that
Petitioner has not established a reasonable certainty that it would prevail in
establishing the unpatentability of at least one challenged claim.
C. Principles of Law
Petitioner has asserted that each of the challenged claims of the ’699
patent is unpatentable as obvious under 35 U.S.C. § 103. A claim is
unpatentable under § 103 if “the differences between the subject matter
sought to be patented and the prior art are such that the subject matter as a
whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.”
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 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. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (citing 35 U.S.C. § 312(a)(3) as “requiring inter partes review
petitions to identify ‘with particularity . . . the evidence that supports the
grounds for the challenge to each claim’”); cf. Intelligent Bio-Systems, Inc. v.
Illumina Cambridge, Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting
35 U.S.C. § 312(a)(3)) (addressing “the requirement that the initial petition
identify ‘with particularity’ the ‘evidence that supports the grounds for the
challenge to each claim’”). This burden never shifts to Patent Owner. See
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Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
(Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d
1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter
partes review). Furthermore, Petitioner cannot satisfy its burden of proving
obviousness by employing “mere conclusory statements.” In re Magnum
Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
Thus, to prevail in an inter partes review, Petitioner must explain how
the proposed combinations and/or alterations of the prior art would render
them unpatentable as obvious. At this preliminary stage, we determine
whether the information in the Petition shows there is a reasonable
likelihood that Petitioner would prevail in establishing that at least one of the
challenged claims would have been obvious over the proposed combinations
and/or alterations of the prior art.
D. Overview of Prior Art
1. Schoelkopf (Ex. 1005)
Schoelkopf discloses a “superconducting device[] formed from
multiple substrates configured to exhibit quantum mechanical phenomena.”
Ex. 1005, 1:16–17. Such a device is depicted in Figure 1, reproduced below:

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Id. at Fig. 1. Figure 1 depicts a superconducting device. Id. at 8:26–9:2.
Schoelkopf discloses that “substrate 101 and 102 together form a bus layer,”
“[s]ubstrate 104 and substrate 105 together form a cavity memory layer,”
and “[s]ubstrate 103 is used as an interconnection layer used to interconnect
various components within the superconducting device 100.” Id. at 9:4–8.
2. Matsuo (Exhibit 1007)
Matsuo discloses a stacked circuit device including an interposer
between a large-scale integration chip and a base substrate. Ex. 1007, [57],
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2:39–41, Fig. 1. Such a device is depicted in Figure 1, reproduced below:

Id. at Fig. 1. Figure 1 depicts structure of a stacked circuit device. Id. at
2:36–37. As depicted, “[a]n interposer 30 is arranged between a base
substrate 10 (mother board, etc.) and an LSI chip 20” allowing a connection
to be made between terminals 11 and terminals 21. Id. at 2:39–43.
3. Frunzio (Ex. 1008)
Frunzio discloses a superconducting qubit device mounted on a PC
board. Ex. 1008, Fig. 2.

Id. at Fig. 2. Figure 2 depicts a resonator mounted on a PC board. Id.
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4. Abdo (Ex. 1006)
Abdo discloses a quantum computing device that uses a “directional
coupler” and a “quantum-limited amplifier that is directional,” where the
“directional coupler enables biasing the [Josephson directional amplifier]
JDA.” Ex. 1006, Abstract, 2.
5. Schmitt (Ex. 1010)
Schmitt discloses a “multiplexed” circuit for “simultaneous readout of
transmon qubits,” with a “chip [that] consists of four cells . . . coupled to a
single transmission line that carries the multiple qubit control and
[Josephson bifurcation amplifier] signals.” Ex. 1010, Title, Abstract, 1.
6. Dotsenko (Ex. 1011)
Dosenko discloses bonding substrates together in a method for
electrically interconnecting two substrates having preformed electrical
contacts. Ex. 1011, Abstract. An embodiment includes “a high-speed
superconducting circuit.” Id.
7. Thom (Ex. 1013)
Thom discloses wiring bonding a quantum circuit with a stack of
printed circuit board substrates. Ex. 1013, Abstract, 45:10–16, 45:40–50,
Fig. 22.
E. Schoelkopf, Matsuo, and Frunzio
Petitioner contends that claims 1, 13, 19, 20, 22, 27, 28, and 38 are
unpatentable under 35 U.S.C. § 103 over Schoelkopf, Matsuo, and Frunzio.
Pet. 13, 15–66. Patent Owner disagrees, arguing that the grounds set forth
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by Petitioner are deficient and do not support institution of an inter partes
review. Prelim. Resp. 22–60.
1. Petitioner’s Contentions
Petitioner contends that Schoelkopf and Matsuo are analogous art to
the ’699 patent because each is from the same field of endeavor and are
reasonably pertinent to the problem of the ’699 patent. Pet. 17–28.
Petitioner similarly contends that Frunzio is analogous art “because it
discloses a superconducting circuit for quantum computation” and its
“teachings would produce obvious, beneficial, and predictable results.” Id.
at 29–36.
Petitioner relies on Schoelkopf as disclosing “the substrates 103-104
. . . interposed between substrates 101-102 and the planar-to-coaxial
transition component 150 to provide electronic connection between qubits
116, 126 and the external coaxial cable. Id. at 20 (citing Ex. 1003 ¶ 59;
Ex. 1005, 9:12–29, Fig. 1). Petitioner sets forth, with reference to
Schoelkopf’s Figure 1, with annotation, what it contends Schoelkopf
discloses. Id. at 20–21.
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Id. at 20 (depicting a superconducting device). Petitioner contends that
“Schoelkopf discloses that substrates 103 and 104 include wiring layers 134,
140, and vias 142 and 144.” Id. (citing Ex. 1005, 10:1–15). Petitioner
contends that “Schoelkopf explains that the ‘wiring layers may be used to
connect components together and or connect components to external
devices’ ‘via a planar-to-coaxial transition component 150.’” Id. at 20–21
(citing Ex. 1003 ¶ 60; Ex. 1005, 8:4–5, 9:31–33).
Petitioner further contends that, on this basis, “a [person of ordinary
skill in the art] would have understood that Schoelkopf’s wiring layers 134,
140, and vias 142 and 144, are used to connect to external devices via
coaxial cables, for reading out the states of qubits 116, 126.” Id. at 21.
Petitioner also contends that Schoelkopf “does not exclude that at least some
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devices would be implemented within superconducting device 100, between
the qubits and the coaxial cable.” Id. (citing Ex. 1005, 9:8, 9:10–11).
Petitioner contends that a person of ordinary skill in the art “would
have understood that some devices, such as amplifiers, filters, couplers,
multiplexers, and the like, were implemented in device chains between
qubits and cables.” Id. (citing Ex. 1003 ¶ 61); see also id. at 21–24 (citing
Ex. 1003 ¶¶ 62–64; Ex. 1006, 1, 4, Fig. 1; Ex. 1009, 1, Figs. 1(a)–(b);
Ex. 1015, Abstract, 74; Ex. 1017, Title, ¶¶ 19, 42–45) (describing examples
of such circuitry).
Petitioner contends that a person of ordinary skill in the art,
recognizing the benefit of such circuits, “would have understood the benefit
of using a circuit layer with circuits for processing qubit signals, in
Schoelkopf’s superconducting device 100, and would have looked to other
references regarding a suitable location to implement such a circuit layer.”
Id. at 24 (citing Ex. 1003 ¶ 65). Petitioner contends, accordingly, that “it
would have been obvious to a [person of ordinary skill in the art] to apply
Matsuo’s teachings of including a circuit layer in an interposer, when
implementing the interposer of Schoelkopf’s superconducting device 100,”
including for the benefit of “allow[ing] for processing of qubit signals before
the signals are read out over coaxial lines, while also providing a reduced
area.” Id. at 25 (citing Ex. 1003 ¶¶ 67–68). Petitioner further explains that
“placing the integrated circuit layer at Schoelkopf’s substrate 103 provides
the advantage of a modular design since the integrated circuit layer of
substrate 103 is separate from other substrates and can be changed or
updated with minimal effect on the design of the circuits of the other
substrates.” Id. at 26 (citing Ex. 1003 ¶ 69). Petitioner contends that, for
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example, a person of ordinary skill in the art “would have known that
substrate 103 may be implemented with a plurality of substrates, with at
least one of them including the integrated circuit layer.” Id. at 27 (citing
2:24–25, 8:30–32).
Petitioner relies on Frunzio as disclosing the details of a planar-to-
coaxial transition component, including coaxial terminals and coaxial cables,
in its Figure 2, with annotations, reproduced below from the Petition:

Id. at 29. Figure 2 (annotated) depicts a resonator mounted on a PC board
with annotations indicating coaxial cables and coaxial terminals, and
identifying the resonator as a superconducting qubit device on a chip. Id.
Petitioner contends, in particular, that “Frunzio supplements [Schoelkopf’s
disclosure] and teaches a plurality of coaxial cables, where each cable is
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coupled to a corresponding coaxial terminal for communicating signals
between external components and qubits.” Id. at 30 (citing Ex. 1003 ¶ 79).
Petitioner also contends that a person of ordinary skill in the art would have
found it obvious “to use a plurality of coaxial terminals and a plurality of
coaxial cables, as Frunzio teaches, in Schoelkopf’s superconducting device
100 because it would facilitate communicating signals (e.g., control and
readout) between external devices and the qubits.” Id. at 31–32 (citing
Ex. 1005, 8:3–5, 9:31–33).
Petitioner also contends that a person of ordinary skill in the art would
have found it obvious “that Schoelkopf’s planar-to-coaxial transition
component 150 uses separate electrical contacts to couple wiring layers for
communicating between external devices and the qubits” (id. at 33 (citing
Ex. 1003 ¶ 84)) and that such a teaching is explicit in Frunzio’s Figure 2,
“with signal lines electrically coupled to the coaxial terminals via electrical
contacts” (id. at 33–34 (citing Ex. 1003 ¶ 85)). Petitioner contends,
accordingly, that a person of ordinary skill in the art “would have been
motivated to use electrical contacts, per Frunzio, when implementing
Schoelkopf’s planar-to-coaxial transition component 150 with coaxial
terminals per Frunzio” because it would provide “electrical continuity
allow[ing] signals (e.g., control and readout) to be exchanged between
components of superconducting device 100 (e.g., qubits) and external
components via the coaxial terminals and coaxial cables.” Id. at 34–35
(citing Ex. 1003 ¶ 87; Ex. 1005, 8:3–5, 9:31–33).
(a) Independent Claim 1
Claim 1 is directed to a quantum computing apparatus including a
quantum circuit device and an interposer that includes both a
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connectorization layer—for connecting the apparatus to a plurality of
cables—and an intermediate layer situated between the quantum circuit
device and the connectorization layer.
Petitioner contends that Schoelkopf’s superconducting device 100 that
performs quantum computations discloses “[a] quantum computing
apparatus.” Pet. 36 (citing Ex. 1003 ¶¶ 90–92; Ex. 1005, 1:14–2:15, 7:6–8,
8:26–27, 11:28–12:3, 12:17–19, 13:7–8).
Petitioner contends that Schoelkopf discloses “a quantum circuit
device” in its disclosure of substrates 101 and 102, which “include quantum
circuits (e.g., qubits, 116, 126, wiring layers, and other components).” Pet.
37 (citing Ex. 1003 ¶¶ 93–96; Ex.1005, 11:28–12:3, 12:8–23, Fig. 1).
Petitioner contends that Schoelkopf teaches an interposer in that “its
superconducting device 100 includes substrates 103, 104 (with
corresponding circuitry) and the planar-to-coaxial transition component 150
interposed between the quantum circuits and the coaxial line.” Pet. 38–39
(citing Ex. 1003 ¶¶ 97–102; Ex. 1005, 8:26–32, 9:5–33, 10:1–11, 11:14–
12:33). Reproducing an annotated Figure 1, Petitioner further contends that
substrates 103 and 104 are multiple layers with “vias and other
superconducting connections fan[ning] out through substrates 103 and 104
to the electrical connector (component 150) at the bottom of substrate 104.”
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Id. (citing Ex. 1005, 9:13–14, 9:27–30, Fig. 1). Figure 1 (annotated) depicts
a superconducting device. Petitioner also contends that “Schoelkopf . . .
recognizes that ‘[a]ny number of substrates may be used’ and that its
embodiments are ‘not so limited.’” Id. at 39 (citing Ex. 1005, 8:26–9:2).
Petitioner contends, in particular, that Schoelkof’s interposer includes
“a connectorization layer” as “substrate 104 and transition component 150
are part of the ‘interposer’” and substrate 104 includes a connectorization
layer. Pet. 39–41. In particular, Petitioner contends that “Schoelkopf’s
substrate 104 includes superconducting layer 134 for connecting to the
planar-to-coaxial transition component 150,” that “[o]ne or more wiring
layers may be used to connect components together and or connect
components to external devices,” and that “[s]uperconducting device 100
may communicate to external components via a planar-to-coaxial transition
component 150.” Id. at 39 (citing Ex. 1005, 10:22–24; quoting id. at 8:3–5,
9:31–33) (emphasis omitted). Petitioner further contends that “it would have
been obvious to a [person of ordinary skill in the art] that the
superconducting layer 134 has connections (additional wiring layers and vias
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not illustrated) from the transition component 150 to the superconducting
layer 140” “[b]ecause the connection path is from the coaxial cable to
internal components, e.g., qubits 116 and 126.” Pet. 40 (citing Ex. 1005,
10:2–8).
Petitioner further contends that the recited “plurality of terminals” and
“plurality of signal lines” included in the connectorization layer would have
been obvious. Pet. 41–48. Petitioner contends that the “plurality of
terminals for connecting the quantum computing apparatus to a
corresponding plurality of cables” would have been obvious because:
(1) the “planar-to-coaxial transition component 150 is part of the
‘connectorization layer’” in Schoelkopf’s superconducting device 100 (id. at
41); (2) a person of ordinary skill in the art “would have understood that
each cable would have been connected to a corresponding coaxial terminal,”
and “Schoelkopf’s ‘coaxial lines’ discloses the ‘corresponding plurality of
cables’” (id. at 41–42 (citing Ex. 1005, 9:31–33, 10:1–11, 12:16–19, 13:5–
10)); and (3) Frunzio “expressly teach[es] a plurality of coaxial terminals for
connecting a quantum computing device to a corresponding plurality of
cables” (id. at 42–43 (citing Ex. 1008, Fig. 2)). Petitioner also relies on the
testimony of Dr. Houck. Id. at 43–44 (citing Ex. 1003 ¶¶ 109–115).
Petitioner contends that the “plurality of signal lines electrically
coupled, via electrical contacts, to the plurality of terminals” would have
been obvious because: (1) “Schoelkopf’s substrate 104 is part of the
‘connectorization layer,’ and Schoelkopf and Frunzio teach implementing
planar-to-coaxial transition component 150 with a plurality of coaxial
terminals” (id. at 44); (2) “‘substrate 104 . . . [includes] a superconducting
layer 134,’ which is connected to the planar-to-coaxial transition component
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150” and that “it would have been obvious to a [person of ordinary skill in
the art] that signal paths (i.e., superconducting layer 134, wiring layers, and
vias not illustrated) of substrate 140, facilitate communication from qubits
116, 126 to the transition component 150” (id. at 44–45 (citing Ex. 1005,
10:1–29, Fig. 1); and (3) Frunzio teaches coupling signal lines to the coaxial
terminals in that a person of ordinary skill in the art “would have understood
that the electrical contacts of Frunzio are electrically and physically attached
to the signal lines using solder” and that “[i]t would have been obvious . . .
to implement planar-to-coaxial transition component 150 with a plurality of
coaxial terminals to electrically couple each coaxial terminal with a
corresponding signal line, via electrical contacts (e.g., solder), for
communicating signals to and from an external device and the qubits” (id. at
46–47 (citing Ex. 1003 ¶ 124; Ex. 1008, Fig. 2, 861)). As to the signal paths
to facilitate communicating signals, Petitioner further explains that, “[f]or
example, it would have been obvious to a [person of ordinary skill in the art]
a via would connect layer 134 to layer 140 and that a via may be used to
connect another wiring layer to layer 140 and/or a wiring layer connected to
qubits 116, 126” and that, “[a]ccordingly, superconducting layer 134, and
other wiring layers and vias not illustrated, separately and together,
correspond to the ‘plurality of signal lines.’” Id. at 45–46. Petitioner also
relies on the testimony of Dr. Houck. Id. at 47–48 (citing Ex. 1003 ¶¶ 116–
126).
Petitioner contends that “Schoelkopf’s substrate 103 positioned
between substrates 101, 102 and substrate 104, discloses ‘at least one
intermediate layer between the quantum circuit device and the
connectorization layer.” Pet. 49 (citing Ex. 1003 ¶¶ 127–130) (emphasis
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omitted); see also id. at 48–49 (citing Ex. 1005, 8:26–9:2, 9:7–11, Fig. 1).
Petitioner relies, in particular, on “substrates 101 and 102 . . . disclos[ing]
‘the quantum circuit device,’ and . . . substrate 104 [as] part of ‘the
connectorization layer’” and depicts layer 103 as an intermediate layer in an
annotated Figure 1, reproduced below.

Id. at 49 (citing id. at 37, 39–41). Figure 1 (annotated) depicts a
superconducting device. Petitioner further contends that “[i]t would have
been obvious to a [person of ordinary skill in the art] that substrate 103
includes a plurality of substrates when suitable.” Id.
Petitioner further contends that the “integrated circuit layer” and
having an “intermediate layer being electrically coupled to the signal lines of
the interposer” would have been obvious. Pet. 49–53. Petitioner contends
that including “an integrated circuit layer” in the “at least one intermediate
layer” would have been obvious because a person of ordinary skill in the art
“would have understood that qubits utilize various circuitry . . . for
processing qubit signals” and “would have looked to other references to
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determine suitable locations for implementing the circuits.” Id. at 50.
Petitioner relies on an interposer 30 disclosed in Matsuo, that “‘has various
circuit elements . . . booster circuit, etc.’” and contends that “[i]n view of
Matsuo, it would have been obvious to a [person of ordinary skill in the art]
to implement a circuit layer on Schoelkopf’s substrate 103.” Id. at 50–51
(citing Ex. 1003 ¶¶ 131–136; Ex. 1007, 2:39–47, 3:1–7, 3:43–53, 4:35–43,
4:47–55, Figs. 1, 6) (emphasis omitted).
Petitioner contends that “Schoelkopf renders obvious ‘the at least one
intermediate layer being electrically coupled to the signal lines of the
interposer’” (emphasis omitted) because “Figure 1 shows the qubits 116, 126
are in communication with the substrate 103 (the ‘intermediate layer’)” and
“it would have been obvious to a [person of ordinary skill in the art] to
provide an electrical connection between substrate 103’s vias 142, 144
(and/or other wiring layers of substrate 103) and the superconducting layer
134 (and/or other wiring layers of substrate 104) . . . to connect qubits 116,
126 to external devices through transition component 150.” Pet. 52–53
(citing id. at 41–51; Ex. 1003 ¶¶ 137–143; Ex. 1005, 1:25–28, 8:3–5, 9:31–
33, Fig. 1).
Petitioner contends that “Schoelkopf in combination with Frunzio
teaches that substrates 103, 104 are configured to supply substrates 101,102,
. . . [with] at least control and measurement signals to and from the plurality
of coaxial cables” and that this “renders obvious that ‘the interposer is
configured to supply the quantum circuit device, during operation of the
quantum computing apparatus, at least control signals and readout signals to
and from the plurality of cables.” Pet. 55 (citing Ex. 1003 ¶¶ 144–150)
(emphasis omitted). Petitioner relies on its earlier analysis as to
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Schoelkopf’s substrates 103, 104, and the planar-to-coaxial transition
component 150 as the “interposer” and “substrates 101 and 102 (and qubits
116 and 126)” as “the quantum circuit device.” Id. at 53 (citing id. at 37–39,
41–44) (emphasis omitted). Petitioner further relies, again, on it being
obvious to a person of ordinary skill in the art “to provide an electrical
connection between the vias 142, 144 and the superconducting layer 134
(within the ‘interposer’ of substrates 103, 104) to have signal continuity for
communicating signals to and from the qubits 116, 126 through planar-to-
coaxial transition component 150 and the coaxial cable.” Id. at 54 (citing id.
at 51–53).
(b) Independent Claim 38
Claim 38 is directed to “[a] method of forming an assembly for a
quantum computing apparatus,” and sets forth the same elements as recited
in claim 1, arranged in the same manner. Compare Ex. 1001, 56:34–48,
with id. at 54:20–36. Petitioner similarly relies on the same elements as
depicted in Schoelkopf’s Figure 1, and the same or similar reasoning, in its
challenge to claim 38 as in its challenge to claim 1. Compare Pet. 59–66,
with id. at 36–55. Accordingly, the challenge to claim 38 similarly falls with
that for claim 1, as set forth below.
(c) Dependent Claims 13, 19, 20, 22, 27, and 28
These claims depend directly, or indirectly, from independent claim 1,
and Petitioner relies on the same elements and reasoning as set forth in its
challenge to claim 1, such that the grounds similarly fall with that for claim
1, as set forth below.
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2. Analysis
In response to Petitioner’s contentions, Patent Owner contends the
ground is deficient because relying on the structure Petitioner relies on for
the connectorization layer (i.e., substrate 104) is contrary to what is actually
disclosed and taught by Schoelkopf, because the proposed modification of
that structure is unnecessary, and because the proposed modification would
have rendered Schoelkopf’s device inoperable for its intended purpose.3
Prelim. Resp. 22–47. As explained below, we agree with Patent Owner that
Petitioner’s showing is deficient.
Patent Owner contends that a person of ordinary skill in the art
“would not have modified Schoelkopf to connect layer 140 with [layer] 134
using additional wiring and vias, as alleged by Petitioner.” Id. at 22. Patent
Owner further contends that “the modification of Schoelkopf to form
additional wiring or vias that are not illustrated or disclosed therein, . . .
[would] render[] Schoelkopf’s device inoperable.” Id. at 23 (citing Ex. 2008
¶¶ 43–49). Patent Owner argues, in particular, that a person of ordinary skill
in the art “would have known that, in Schoelkopf’s Figure 1 . . . layer 140
. . . would be connected to the planar-to-coaxial transition 150.” Id. at 24–25
(citing Ex. 2008 ¶ 20). Patent Owner further argues that “Petitioner’s
misinterpretation of layer 134 requires Petitioner to justify extensively and
implausibly re-wiring Schoelkopf’s device, to electrically connect layer 134
with layer 140.” Id. at 32. Patent Owner explains further that “[t]here
simply would have been no reason to modify Schoelkopf in this manner

3 Patent Owner raises a number of additional arguments which we decline to
reach as doing so is not necessary for this decision. See generally Prelim.
Resp.
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because Schoelkopf expressly discloses that signals from wiring layer 140
are transmitted through electromagnetic radiation for communicating with
cavity 130. Id. at 34 (citing Ex. 1005, 10:27–28).
Patent Owner also argues, in particular, that Petitioner’s proposed
modification, which relies on electrically connecting the disclosed qubits
116, 126 by way of connections to layer 134 and then to planar-to-coaxial
transition 150, would not have been obvious because of the function of layer
134 in Schoelkopf and how the proposed modification would alter its
function and render the modified device inoperable for its intended purpose.
Pet. 40–47. Patent Owner supports its arguments as to the intended function
of layer 134, and how that function would be inoperably altered by the
proposed modification, with the testimony of Dr. Choi. Ex. 2008 ¶¶ 31–49.
Patent Owner also argues, in effect, that “additional wiring and vias
not illustrated” cannot support the conclusion that the particular claimed
structure would have been obvious. Prelim. Resp. 22–24, 32–34.
As discussed above, Petitioner identifies substrate 104, and more
particularly superconducting layer 134, as an interconnection layer that
facilitates communication from qubits 116, 126 to the transition component
150. Petitioner reiterates this position in its Preliminary Reply addressing
Patent Owner’s Preliminary Response. Prelim. Reply 1 (citing Pet. 30–36,
44–48). Specifically, in addressing Patent Owner’s argument that what is
actually disclosed in Schoenkopf is contrary to Petitioner’s contentions,
Petitioner argues that Patent Owner’s “argument is misapplied since the
Petition relied on the final patent drawing of Schoelkopf—not on the
provisional—to show component 150 being connected to superconducting
layer 134.” Id. The difficulty for Petitioner, however, is that despite not
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explicitly illustrating a connection between wiring layer 140 in substrate 103
and planar-to-coaxial transition 150 in Figure 1, Schoelkopf illustrates
superconducting device 100 as including planar-to-coaxial transition 150
(Ex. 1005, Fig. 1), thus identifying planar-to-coaxial transition 150 as a
component of superconducting device 100, and explains that “[s]ubstrate
103 is used as an interconnection layer used to interconnect various
components within the superconducting device 100” (id. at 9:7–8), and that
the interconnection layer includes a “wiring layer . . . disposed on and/or
within the substrate 103 . . . configured to interconnect different components
of the superconducting device 100” (id. at 9:8–11). Schoelkopf further
identifies layer 140 as the “wiring layer,” and teaches transferring
information from an external qubit to cavity resonator 130 via wiring layer
140. Id. at 11:14–18. That is, Schoelkopf teaches that wiring layer 140,
rather than layer 134, is the “connectorization layer” element. Further, even
though the testimony of Dr. Houck reproduces the description of Figure 1 as
depicting substrate 103 as an interconnection layer that includes a wiring
layer, it fails to explain why layer 103 should be understood to be an
intermediate layer rather than an interconnection layer as taught by
Schoelkopf. See, e.g., Ex. 1003 ¶¶ 127–129 (identifying substrate 103 as an
“intermediate layer,” while reproducing disclosure from Schoelkopf stating
“[s]ubstrate 103 is used as an interconnection layer used to connect various
components within the superconducting device 100”). Neither Petitioner nor
Dr. Houck assert that the planar-to-coaxial transition 150 in Figure 1 is not a
component of superconducting device 100, which it reasonably is as it is
depicted as such in Figure 1. See generally Pet.; see Ex. 1005, Fig. 1.
Accordingly, it follows that substrate 103 is the interconnection layer
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disclosed in Schoelkopf to connect components within the superconducting
device, including qubits 116, 126, and the planar-to-coaxial transition 150,
rather than substrate 104 as Petitioner contends. Id.
As is further apparent in the Petition, and in Petitioner’s Preliminary
Reply, the reasoning underlying the grounds is based on the necessity of
wiring and vias that are not shown in Figure 1 to establish electrical
interconnections between the disclosed qubits formed in substrates 101 and
102 and an interconnection layer in substrate 104, which Petitioner contends
is connected to planar-to-coaxial transition 150. See generally Pet.; Prelim.
Reply. Having relied on Schoelkopf as disclosing an interconnection layer
in substrate 104, rather than in substrate 103, on this record, Petitioner fails
to meet the burden for instituting an inter partes review. Whether couched
in terms of what Petitioner contends Schoelkopf discloses, or what
modifications to Schoelkopf would have been necessary for the quantum
computing device 100 to function if substrate 104 were made the
connectorization/interconnection layer, Petitioner’s failure to account for
Schoelkopf’s identification of substrate 103 as the interconnection layer
undercuts the sufficiency of the grounds set forth in the Petition. As set
forth, the thrust of Petitioner’s grounds relies on wire layers formed on
and/or in substrate layer 103 as being disposed between, i.e., intermediate to,
the quantum circuit device and the connectorization layer. It is not plainly
evident that including additional circuitry on and/or in substrate 103, as set
forth in the Petition, locates that circuitry between the quantum circuit
device and the connectorization layer if substrate 103 itself is, or includes,
the connectorization layer. It further follows that treating a different layer—
layer 104—as an interconnection layer for establishing electrical
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interconnections between qubits 116, 126 and planar-to-coaxial transition
150 requires something more than the relied on necessity for function of
allowing communication asserted, particularly where Schoelkopf identifies
substrate 104 and substrate 105 in the disclosed supercomputing device as
together forming a cavity memory layer. Ex. 1005, 9:5–6, Fig. 1. Petitioner
also fails to explain how the structure required for the cavity memory layer
would otherwise require structure that includes the necessary
interconnections to allow communication from qubits 116, 126 to the
transition component 150 through substrate 104, or whether the cavity
memory layer would work were the additional structure provided. See
generally Pet.
In effect, having failed to establish the necessity of forming
interconnections from qubits 116, 126 through wiring layer 134 to planar-to-
coaxial transition 150, Petitioner’s identification of modified structures in
Schoelkopf that read on claim 1 amounts to little more than an assertion of
what one of ordinary skill in the art could make, rather than what one of
ordinary skill in the art would have been motivated to make. See generally
Pet.; Prelim. Reply. This is not sufficient to reasonably support a ground of
obviousness. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed.
Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could
have made but would have been motivated to make the combinations or
modifications of prior art to arrive at the claimed invention.”). Further,
“[c]are must be taken to avoid hindsight reconstruction by using ‘the patent
in suit as a guide through the maze of prior art references, combining the
right references in the right way so as to achieve the result of the claims in
suit.’” Grain Processing Corp. v. American Maize-Prods. Co., 840 F.2d
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902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States,
702 F.2d 1005, 1012 (Fed. Cir. 1983)). Here, absent the necessity of using
wiring layer 134 to form the relied on interconnection, particularly where
substrate 103 is identified as including wiring configured to interconnect
different components of the device, there is an insufficient showing that the
combination set forth by Petitioner is not improperly grounded on hindsight
reconstruction.
Moreover, on this record, the Petition also falls short to the extent that
Petitioner’s proposed modification requires forming interconnections
through wiring layer 134 to electrically connect qubits 116, 126 to planar-to-
coaxial transition 150. See generally Pet. Petitioner fails to account for the
role and function of cavity resonator 130 formed by layer 4 and layer 5, of
which wiring layer 134 is an integral part. Id. Although Petitioner avers
that its proposed modification would make wiring layer 134 a
connectorization layer that is consistent with the description of a
connectorization layer in the ’699 patent (id. at 39–41; Ex. 1003 ¶¶ 103–
108), neither the Petition nor Dr. Houck address the identified function of
cavity resonator 130, which includes wiring layer 134 (Ex. 1005, 9:5–6, Fig.
1).
Patent Owner’s arguments, supported by the testimony of Dr. Choi,
that modifying wiring layer 134 in the proposed manner to function as a
signal-carrying connectorization layer rather than a ground plane would
render Schoelkopf’s cavity resonator 130 inoperable, highlights the
inadequacy of Petitioner’s grounds. See Prelim. Resp. 41–47; Ex. 2008
¶¶ 31–49; Ex. 2005, 626–630 (disclosing electroplating the wafers that form
a resonant cavity with gold “to obtain a good RF ground plane”). The issue
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is not whether the device could be modified to connect layer 140 to planar-
to-coaxial transition 150 using wiring layer 134, or even whether a person of
ordinary skill in the art would recognize that it could be. Rather, the issue is
whether doing so would have been obvious given the described function of
cavity resonator 130 that is made from wiring layer 134, which Petitioner
failed to address in any meaningful manner in the Petition. See generally
Pet.
Petitioner does address, in its Preliminary Reply, certain arguments
raised by Patent Owner, including that the arguments are not supported by
Patent Owner’s own evidence. Prelim. Reply 1–3. To the extent
Petitioner’s arguments raise any issue as to Patent Owner’s Preliminary
Response, however, they still fall short of excusing the failure to sufficiently
address why the modification required to Schoelkopf’s quantum computing
device would not alter or be contrary to its original function. See generally
Pet. Moreover, Petitioner’s reply to Patent Owner’s argument against the
proposed modification—that it was well known to connect both the signal
and ground components of a coaxial transition at the ground plane—is
inapposite. Prelim. Reply 1–3. The Petition does not identify layer 134 as a
ground plane, and does not identify some unseen trace that is dielectrically
isolated from layer 134 in substrate 104 as a signal-carrying wire. See
generally Pet. Instead, the Petition identifies layer 134 itself as the signal-
carrying wire that is connected to the signal-carrying component of coaxial
transition 150. See, e.g., id. at 40 (indicating a skilled artisan would have
found it obvious that “superconducting layer 134 has connections . . . from
the transition component 150 to the superconducting layer 140, vias 142,
144, and the qubits 116, 126.”). But Schoelkopf describes layer 134 as an
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integral part of cavity resonator 130. See Ex. 1005, 11:9–13, Fig. 2
(disclosing apertures 236 and 238 in layer 134 are part of cavity resonator
130). Petitioner does not resolve this discrepancy in the Petition, and does
not explain how layer 134 could serve as both a grounded part of cavity
resonator 130 and a signal-carrying line to carry signals between coaxial
transition 150 and qubits 116 and 128.
As set forth by our reviewing court, “the petitioner has the burden
from the onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc., 815 F.3d at 1363; cf. Intelligent Bio-Systems,
821 F.3d at 1369 (quoting 35 U.S.C. § 312(a)(3)) (addressing “the
requirement that the initial petition identify ‘with particularity’ the evidence
that supports the grounds for the challenge to each claim”). That burden
never shifts to Patent Owner. Dynamic Drinkware, 800 F.3d at 1378. And
that burden cannot be met by “mere conclusory statements.” Magnum Oil
Tools, 829 F.3d at 1380. Moreover, our role is not to remedy the
deficiencies in Petitions that fall short. Sirona Dental Sys. GMBH v. Institut
Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir. 2018) (quoting SAS Inst. Inc.
v. Iancu, 138 S. Ct. 1348, 1356–57 (2018)) (explaining that because “‘the
petitioner's contentions, not the Director's discretion, define the scope . . . [,]’
[i]t would thus not be proper for the Board to deviate from the grounds in the
petition and raise its own obviousness theory” “institut[ing] a different inter
partes review”); cf. Magnum Oil Tools, 829 F.3d at 1380–81 (rejecting an
argument that the Board properly “ma[de] an obviousness argument on
behalf of [petitioner]” that “could have been included in a properly drafted
petition,” because “petitioner . . . bears the burden of proof”). Petitioner
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fails, accordingly, to meet its burden for instituting inter partes review on
the basis of Schoelkopf, Matsuo, and Frunzio.
F. Schoelkopf, Matsuo, Frunzio, and Abdo
Petitioner contends that claims 7, 8, and 10 are unpatentable under
35 U.S.C. § 103 over Schoelkopf, Matsuo, Frunzio, and Abdo. Pet. 66–78.
Petitioner relies on Abdo for its disclosure of particular types of circuits in
the integrated circuit layer of the intermediate layers. Id.
On this record, we discern nothing in the ground set forth relying on
Abdo that remedies the deficiencies discussed above as to the combination
of Schoelkopf, Matsuo, and Frunzio. Id.; Prelim. Reply. Accordingly, for
the same or similar reasons, Petitioner again fails to meet its burden for
instituting inter partes review.
G. Schoelkopf, Matsuo, Frunzio, and Schmitt
Petitioner contends that claim 9 is unpatentable under 35 U.S.C. § 103
over Schoelkopf, Matsuo, Frunzio, and Schmitt. Pet. 78–82. Petitioner
relies on Schmitt for its disclosure of a multiplexer, and contends it would
have been obvious to apply the related teachings in implementing the
integrated circuits. Id. In doing so, Petitioner provides no further
explanation as to where to incorporate such circuitry (id.), expressly stating
that the Petition does “not [rely] on a physical incorporation of elements”
(id. at 81).
On this record, we discern nothing in the ground set forth relying on
Schmitt that remedies the deficiencies discussed above as to the combination
of Schoelkopf, Matsuo, and Frunzio. Id. at 78–82; Prelim. Reply.
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H. Schoelkopf, Matsuo, Frunzio, and Dotsenko
Petitioner contends that claims 11, 12, 18, 30, 40, and 42 are
unpatentable under 35 U.S.C. § 103 over Schoelkopf, Matsuo, Frunzio, and
Dotsenko. Pet. 83–86. Petitioner relies on Dotsenko for its teaching of how
to bond substrates together. Id.
On this record, we discern nothing in the ground set forth relying on
Dotsenko that remedies the deficiencies discussed above as to the
combination of Schoelkopf, Matsuo, and Frunzio. Id.; Prelim. Reply.
I. Schoelkopf, Matsuo, Frunzio, and Thom
Petitioner contends that claims 23–26, 41, and 43 are unpatentable
under 35 U.S.C. § 103 over Schoelkopf, Matsuo, Frunzio, and Thom. Pet.
94–106. Petitioner relies on Thom for its disclosure of printed circuit boards
as substrates (id. at 95–98) and on bond wires as alternative (or additional)
communication paths to facilitate control and/or readout of the qubits (id. at
98–101). Petitioner also contends that in making this modification, “it
would have been obvious to a [person of ordinary skill in the art] that
substrate 105 and the corresponding resonator may be omitted as optional.”
Id. at 96–97, 100; Ex. 1005, 16:22–26. There is no particular explanation
provided, however, how addition of bond wires, or their use as alternative
connections, or omitting substrate 105 and the corresponding resonator
would provide a structure differing materially in its arrangement of a
quantum circuit device, an intermediate layer including an integrated circuit,
and a connectorization layer. Pet. 94–106. In effect, as discussed above,
there is again no sufficient basis set forth by Petitioner for why the particular
combination would be made, in the manner required, to meet the claims,
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while properly guarding against improper hindsight reconstruction. Belden,
805 F.3d at 1073; Grain Processing Corp., 840 F.2d at 907.
On this record, accordingly, we discern nothing in the ground set forth
relying on Thom that remedies the deficiencies discussed above as to the
combination of Schoelkopf, Matsuo, and Frunzio. Id.; Prelim. Reply.
IV. CONCLUSION
Petitioner has not established a reasonable likelihood of prevailing on
any of its assertions that claims 1, 7–13, 18–20, 22–28, 30, 38, and 40–43 of
the ’699 patent are unpatentable.
V. ORDER
For the reasons given, it is:
ORDERED that the Petition is denied as to all challenged claims of
the ’699 patent and no trial is instituted.

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PETITIONER:
David L. McCombs
Thomas W. Kelton
Gregory P. Huh
HAYNES AND BOONE, LLP
david.mccombs.ipr@haynesboone.com
thomas.kelton.ipr@haynesboone.com
gregory.huh.ipr@haynesboone.com

PATENT OWNER:
David A. Jakopin
Josh Tucker
Patrick A. Doody
PILLSBURY WINTHROP SHAW PITTMAN LLP
david.jakopin@pillsburylaw.com
josh.tucker@pillsburylaw.com
patrick.doody@pillsburylaw.com