Decision Denying Institution IPR2014-00243


Takeaway: Each ground of unpatentability asserted by a petition requires specific support and analysis to be considered.

In its Decision, the Board denied institution of inter partes review for each of challenged claims 1-28 (i.e., independent claims 1, 2, and 17 and dependent claims 3-16 and 18-28) of the ’992 patent.  This Decision was preceded by the filing of the original Petition and a Patent Owner Response.  The ’992 patent relates to “a method for electrolytically plating copper onto a substrate having submicron-sized interconnect features using a source of copper ions and suppressor compound having polyether groups.”

The Petition cited seventeen different prior art references.  The asserted grounds for unpatentability were (1) anticipation of claims 1-15, 17-22, and 26-28 under 35 U.S.C. § 102 in view of Hagiwara; (2) anticipation of claims 1-28 under 35 U.S.C. § 102 in view of Wang; and (3) obviousness of claims 1-28 under 35 U.S.C. § 103 over Hagiwara and Wang in view of “Other References.”  Although item (3) was identified as a single ground in the Petition, the Board found that this ground actually constituted at least 34 potential grounds of unpatentability being raised by Petitioner.

In its claim construction, the Board considered Petitioner’s proposed interpretations for the claim terms “suppressor” and “superfill.”  Patent Owner generally agreed with Petitioner’s proposed construction for the term “suppressor,” but added that this term is further limited to compounds that provide the function of suppression in the claimed method.  The Board did not reach the issue of whether the additional limits proposed by Patent Owner were appropriate, because this issue was not material to the Board’s Decision.  Petitioner proposed an interpretation for “superfill” that was accepted by Patent Owner and adopted by the Board.  Patent Owner sought specific constructions of the terms “bonded” and “nitrogen-containing species,” but the Board did not find that such terms warranted specific construction.  The Board interpreted the terms “propylene oxide (PO) repeat units” and “ethylene oxide (EO) repeat units” in agreement with Patent Owner and “in keeping with the evidence cited in [Patent Owner’s] Preliminary Response.”

As for Petitioner’s contention that Hagiwara anticipated claims 1-15, 17-22, and 26-28 under 35 U.S.C. § 102, the Board agreed with Patent Owner that Hagiwara did not teach all of the limitations in any of independent claims 1, 2, and 17.

This conclusion resulted, for at least independent claim 1, from the claim construction adopted by the Board.  The Board found that “the 2-hydroxyproplylene spacers, the groups on either side of the center –CH2-CH2O- element, are not equivalent to the PO repeat units claimed in claim 1.”  Moreover, the Board agreed with Patent Owner that Hagiwara did not teach or suggest “any particular tetronic surfactant or how any such surfactant would provide the recited superfilling properties.”  As pointed out in case law cited by the Board, “the disclosure of a genus in the prior art is not necessarily a disclosure of every species that is a member of that genus.”  The Board also was not persuaded, despite an “inherent anticipation analysis for claim 1” that had been provided in the testimony of Petitioner’s expert, Dr. West, that Hagiwara disclosed the compounds recited in claim 1 or inherently disclosed the superfill properties recited in claim 1.  The Board was not persuaded that Petitioner had sufficiently challenged the patentability of independent claim 2 in view of Hagiwara for essentially the same reasons discussed above in connection with independent claim 1.  The Board similarly was not persuaded by Petitioner’s inherent anticipation arguments that it had provided for independent claim 17 in view of Hagiwara.

Regarding the contention that claims 1-28 are anticipated under 35 U.S.C. § 102 in view of Wang, the Board agreed with Patent Owner that “any combination of PO repeat units and EO repeat units, in Wang, is at most linked to the imidazole through a 2-hydroxyproplylene spacer, just as in Hagiwara.” As such, the Board was not persuaded that Wang “discloses that the EO/PO repeat units are bonded to a nitrogen-containing species, as per claim 1.”  Moreover, the Board agreed with Patent Owner that there was no enabling disclosure in Wang for any dual additive that does not include a spacer, and concluding that, even if Dr. West’s testimony on this point were correct, “this is purely speculative in view of the totality of Wang’s disclosure.”  The Board also rejected Petitioner’s inherent anticipation argument based on Wang as well, indicating that it was not persuaded that the suppressors taught by Wang “fall within the scope of claim 1, such that the superfill properties would need to be inherently disclosed.”  The Board found that in challenging independent claims 2 and 17 in view of Wang, Petitioner had relied on the same anticipation and inherency analysis provided for claim 1.  Thus, the Board found Petitioner’s challenge to claim 2 and 17 on this ground to be unpersuasive for the same reasons it found Petitioner’s claim 1 arguments to be unpersuasive.

As for the obviousness challenge under 35 U.S.C. § 103 based on Hagiwara and Wang in view of “Other References,” the Board found that this purported ground actually included at least 34 potential grounds, with each ground requiring specific support and analysis to be considered; that Petitioner had not sufficiently provided such required specific support and analysis to be considered; and that, therefore, Petitioner had not sufficiently demonstrated a prima facie case of obviousness.  Moreover, Petitioner had failed to address all of the Graham factors in connection with its obviousness contentions, e.g., explaining any differences between the claimed subject matter and the prior art.”  Also, the Board was not persuaded by Dr. West’s testimony regarding unpatentability.

Moses Lake Industries, Inc. v. Enthone, Inc., IPR2014-00243
Paper 6: Decision
Dated: June 18, 2014
Patent 7,303,992 B2

Before: Kevin F. Turner, Sheridan K. Snedden, and Jeremy M. Plenzler
Written by: Turner
Related proceedings: Enthone, Inc. v. Moses Lake Industries, Inc., Case No. 1: 13-cv-1054 (N.D.N.Y.); IPR2014-00246 (challenging “sister” U.S. Patent No. 7,815,786, also asserted in the aforementioned litigation)