Acorn Semi, LLC

Patent Trials and Appeals Board

Jan 12, 2022

IPR2020-01205 (P.T.A.B. Jan. 12, 2022)

Trials@uspto.gov Paper 51 571-272-7822 Date: January 12, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD SAMSUNG ELECTRONICS CO., LTD., Petitioner, v. ACORN SEMI, LLC, Patent Owner. IPR2020-01205 Patent 9,461,167 B2 Before BRIAN J. McNAMARA, JOHN R. KENNY, and AARON W. MOORE, Administrative Patent Judges. KENNY, Administrative Patent Judge. DECISION Final Written Decision Determining All Challenged Claims Unpatentable Dismissing Patent Owner’s Motion to Exclude 35 U.S.C. § 318(a) IPR2020-01205 Patent 9,461,167 B2 2 I. INTRODUCTION Samsung Electronics Co, Ltd. (“Petitioner”) filed a Petition, Paper 2 (“Petition” or “Pet.”), to institute an inter partes review of claims 1-6 and 8- 16 of U.S. Patent No. 9,461,167 B2 (Ex. 1001, “the ’167 patent”). Acorn Semi LLC (“Patent Owner”) subsequently disclaimed claims 4, 5, and 13 (see Ex. 2003, 1) and filed a Preliminary Response, contending that the Petition should be denied as to all non-disclaimed claims challenged (i.e., claims 1-3, 6, 8-12, 14-16 (“challenged claims”)). On January 13, 2021, we instituted an inter partes review of all challenged claims. Paper 23 (“Institution Decision” or “Inst. Dec.”). Patent Owner filed a Patent Owner Response (Paper 31, “PO Resp.”) and an Updated Mandatory Notice reporting a jury verdict in a related district court litigation (Paper 33; Ex. 2121). Petitioner filed a Reply (Paper 36, “Pet. Reply”), and Patent Owner filed a Sur-reply (Paper 42, “PO Sur-reply”). Patent Owner also filed a Motion to Exclude certain cross-examination testimony of its expert witness, Dr. Kelin J. Kuhn (Paper 43 “Mot. Excl.”). Petitioner filed an Opposition to Patent Owner’s Motion to Exclude (Paper 45, “Opp. Mot. Excl.”), and Patent Owner filed a Reply to Petitioner’s Opposition to Patent Owner’s Motion to Exclude (Paper 46, “Reply Mot. Excl.”). A transcript of an oral hearing held on October 13, 2021 (Paper 50, “Tr.”) has been entered into the record. We have jurisdiction under 35 U.S.C. § 6. For the reasons discussed below, we determine that Petitioner has shown, by a preponderance of the evidence, that all challenged claims are unpatentable. IPR2020-01205 Patent 9,461,167 B2 3 A. Related Matters The Petition states that the ’167 patent is asserted in the following litigation: Acorn Semi, LLC v. Samsung Electronics Co. Ltd., Civil Action No. 2:19-cv-347 (E.D. Tex.) (“Acorn Litigation”), and asserts the complaint was served on October 24, 2019. Pet. 3 (citing Ex. 1032). Patent Owner identifies IPR2020-01241 as also concerning the ’167 patent. Paper 5, 2. Petitioner and Patent Owner also identify petitions for inter partes review concerning patents related to the ’167 patent that have been asserted in the Acorn Litigation and may be affected by the outcome of this proceeding. See Pet. 4, Paper 5, 2. Petitioner and Patent Owner also identify related patents and patent applications. See Pet. 4, Paper 5, 1. B. The ’167 Patent The ’167 patent “relates to a process for depinning the Fermi level of a semiconductor at a metal-interface layer-semiconductor junction and to devices that employ such a junction.” Ex. 1001, 1:26-29. The ’167 patent explains that Schottky’s theory concerning the ability of a junction to conduct current in one direction more favorably than in the other direction, i.e., the rectifying behavior of a metal/semiconductor junction (e.g., an aluminum/silicon junction) depends upon a barrier at the surface of the contact between the metal and the semiconductor. Id. at 1:33-48. As the barrier height at the metal/semiconductor interface determines the electrical properties of the junction, controlling the barrier height is an important goal. Id. at 3:4-10. The ’167 patent further explains that Schottky’s theory postulates the height of the barrier, as measured by the potential necessary for an electron to pass from the metal to the semiconductor, is the difference between the work function of the metal (i.e., the energy required to free an electron at the IPR2020-01205 Patent 9,461,167 B2 4 Fermi level (the highest occupied energy state of the metal at T=0)) and the electron affinity of the semiconductor (i.e., the difference between the energy of a free electron and the conduction band of the semiconductor); but experimental results indicate a weaker variation of barrier height with work function than implied by this model. Ex. 1001, 1:49-2:3. To explain the discrepancy between the predicted and observed behavior, Bardeen’s model introduced the concept of semiconductor surface states, i.e., energy states within the bandgap between the valence and conduction bands at the edge of the semiconductor crystal that arise from incomplete covalent bonds, impurities, and other effects of termination. Id. at 2:4-18, Fig. 1 (showing dangling bonds 120). Although Bardeen’s model assumes that surface states are sufficient to pin the Fermi level in the semiconductor at a point between the valence and conduction bands, such that the barrier height should be independent of the metal’s work function, in experiments, this condition is observed rarely. Id. at 2:19-25. Further, according to the ’167 patent, Tersoff proposed that the Fermi level of a semiconductor is pinned near an effective “gap center” due to metal induced gap states (MIGS), which are energy states in the bandgap of the semiconductor that become populated with metal. Ex. 1001, 2:35-44. Thus, the wave functions of electrons in the metal do not terminate abruptly at the surface of the metal, but decay in proportion to the distance from the surface, extending inside the semiconductor. Id. at 2:44-48. To maintain the sum rule on the density of states in the semiconductor, electrons near the surface occupy energy states in the gap derived from the valence band such that the density of states in the valence band is reduced. To maintain charge neutrality, the highest occupied state (which defines the Fermi level of the semiconductor) will then lie at the crossover point from states derived from the valence band to those derived from IPR2020-01205 Patent 9,461,167 B2 5 the conduction band. This crossover occurs at the branch point of the band structure. Id. at 2:48-56. The ’167 patent also notes one further surface effect on diode characteristics is inhomogeneity, i.e., “if factors affecting the barrier height (e.g., density of surface states) vary across the plane of the junction, the resulting properties of the junction are found not to be a linear combination of the properties of the different regions.” Id. at 2:63-67. According to the ’167 patent “a classic metal-semiconductor junction is characterized by a Schottky barrier, the properties of which (e.g., barrier height) depend on surface states, MIGS and inhomogeneities.” Ex. 1001, 2:67-3:3. “Before one can tune the barrier height, however, one must depin the Fermi level of the semiconductor.” Id. at 3:10-12. The ’167 patent seeks to depin the Fermi level of the semiconductor while still permitting substantial current flow between the metal and the semiconductor. Id. at 3:12-15. The ’167 patent describes depinning the Fermi level as follows: By depinning the Fermi level, the present inventors mean a condition wherein all, or substantially all, dangling bonds that may otherwise be present at the semiconductor surface have been terminated, and the effect of MIGS has been overcome, or at least reduced, by displacing the semiconductor a sufficient distance from the metal. Id. at 3:30-35. The ’167 patent achieves this goal using thin interface layers disposed between a metal and a silicon based semiconductor to form a “metal-interface layer-semiconductor junction” whose thickness varies with a corresponding minimum specific contact resistance, which depends on the materials used and allows for depinning the Fermi level while permitting current to flow when the junction is appropriately biased. Id. at 3:19-30; see also id. at 12:59-14:17, 14:29-52, Figs. 6, 8. “Minimum specific contact resistances of less than or equal to approximately 10 Ω-μm2 or even less IPR2020-01205 Patent 9,461,167 B2 6 than or equal to approximately 1Ω-μm2 may be achieved for such junctions in accordance with the present invention.” Id. at 3:36-39. Such low contact resistances are achieved by selecting a metal with a work function near the conduction band of the semiconductor for n-type semiconductors, or a work function near the valence band for p-type semiconductors. Id. at 5:19-23. Figure 8 of the ’167 patent is reproduced below. Figure 8 of the ’167 patent Figure 8 of the ’167 patent is a graph of interface specific contact resistance versus interface thickness for a structure where the work function of the metal is the same as the electron affinity of the semiconductor, such that the Fermi level of the metal lines up with the conduction band of the semiconductor. Ex. 1001, 14:29-35. According to the ’167 patent, Figure 8 shows that, at large thicknesses, the interface layer poses significant resistance to current, but as interface layer thickness decreases, resistance falls due to increased tunneling current. Id. at 14:29-38. However, at some point, as the interface layer gets thinner, the effect of MIGS increasingly pulls the Fermi level of the metal down towards the mid-gap of the semiconductor, creating a Schottky barrier and increasing resistance. Id. at IPR2020-01205 Patent 9,461,167 B2 7 14:38-42. Thus, there is an optimum thickness where the resistance is at a minimum and the effect of MIGS has been reduced to depin the metal and lower the Schottky barrier, but the layer is sufficiently thin to allow significant current across the interface layer, such that specific contact resistances of less than or equal to approximately 2500 Ω-m2, 1000 Ω-m2, 100 Ω-m2, 50 Ω-m2, 10 Ω-m2, or less than 1 Ω-m2 reportedly can be achieved. Id. at 14:45-52. In one embodiment, the interface layer may be a monolayer or several monolayers of passivating material (e.g., a nitride, oxide, oxynitride, arsenide, hydride and/or fluoride) and may include a separation oxide layer, the specific contact resistance of the electrical device is less than 10 Ω-μm2. Ex. 1001, 3:40-53, see also id. at 10:43-54. In another embodiment, the interface layer is made up of a passivation layer fabricated by exposing the semiconductor to nitrogenous material (e.g., ammonia (NH3), nitrogen (N2) or unbound gaseous nitrogen (N) generated from a plasma process) and while heating the semiconductor in a vacuum chamber. Id. at 3:44-61. Another embodiment uses an interface layer of passivating material disposed between the surface of a semiconductor and a conductor in which the interface is of a sufficient thickness to reduce the effect of MIGs in the semiconductor and passivates the semiconductor but, because the thickness of the interface layer is chosen to provide minimum, or near minimum, specific contact resistance for the junction, significant current may flow between the conductor and the semiconductor. Id. at 3:62-4:8. In other embodiments, the interface layer is configured to allow a Fermi level of the conductor to (i) align with a conduction band of the semiconductor, (ii) align with a valence band of the semiconductor, and (iii) to be independent of the Fermi level of the semiconductor, allowing current IPR2020-01205 Patent 9,461,167 B2 8 to flow between the conductor and the semiconductor when the junction is biased because the thickness of the interface layer corresponds to a minimum or near minimum contact resistance for the junction. Ex. 1001, 4:8-18. Specific contact resistances of less than or equal to approximately 2500 Ω-m2, 1000 Ω-m2, 100 Ω-m2, 50 Ω-m2, 10 Ω-m2, or less than 1 Ω-m2 reportedly can be achieved. Id. at 4:19-22, 14:45-52. C. Claims As mentioned, Petitioner challenges claims 1-3, 6, 8-12, and 14-16. Claim 1 is independent. Claims 2, 3, 6, 8-12, and 14-16 each depend directly or indirectly from claim 1. Claim 1 reads: 1. An electrical junction comprising an interface layer disposed between a contact metal and a semiconductor, the semiconductor comprising a source or drain of a transistor, the interface layer configured to provide a specific contact resistivity between the contact metal and the semiconductor of less than 1 Ω-μm2, the interface layer comprising a metal oxide and an oxide of the semiconductor. Ex. 1001, 18:37-43. D. Asserted Ground Petitioner asserts that the challenged claims would have been unpatentable based on the following ground: Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis 1-3, 6, 8-12, 14-16 102 Grupp ’4831 E. Level of Ordinary Skill in the Art Petitioner describes an ordinarily skilled artisan as having any of the following combinations of education and experience: 1 U.S. Patent No. 7,176,483 B2, issued Feb. 13, 2007 (Ex. 1015). IPR2020-01205 Patent 9,461,167 B2 9 [i] a Ph.D. in electrical engineering, physics, materials science, or chemical engineering, with two years of practical experience with semiconductor research and design; [ii] a Master’s degree in electrical engineering, physics, materials science, or chemical engineering, with four years of practical experience with semiconductor research and design; or [iii] a Bachelor’s degree in electrical engineering, physics, materials science, or chemical engineering, with six to eight years of practical experience with semiconductor research and design. Pet. 11-12 (citing Ex. 1016, Schubert Decl. ¶¶ 70-71). The Patent Owner Preliminary Response did not comment on the level of ordinary skill in the art. In our Institution Decision, we were persuaded that Petitioner’s description of the level of ordinary skill is appropriate for the subject matter of the ’167 patent and applied it in that Decision. Inst. Dec. 9-10. The Patent Owner Response does not comment on the level of ordinary skill in the art. See generally PO Resp. Thus, we apply the description of the level of ordinary skill set forth in the Petition in this Decision. Ex. 1016, Schubert Decl. ¶¶ 70-71. II. CLAIM CONSTRUCTION For petitions filed after November 13, 2018, we interpret claim terms using “the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). In this context, claim terms “are generally given their ordinary and customary meaning” as understood by an ordinarily skilled artisan at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (citations omitted) (en banc). “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 description, and the IPR2020-01205 Patent 9,461,167 B2 10 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). Extrinsic evidence is “less significant than the intrinsic record in determining ‘the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317. Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We construe only those claim terms that require analysis to determine whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). A. Specific Contact Resistivity Petitioner notes that the term “specific contact resistivity” appears in claim 1, but is not otherwise used in the ’167 patent specification. Pet. 13. According to Petitioner, because the terms “specific contact resistance” and “specific contact resistivity” generally are used interchangeably, a person of ordinary skill in the art would have understood the term “specific contact resistivity” in claim 1 to refer to “specific contact resistance.” Id. (citing Ex. 1016, Schubert Decl. ¶¶ 74-76). Patent Owner’s Preliminary Response did not respond explicitly to Petitioner’s proposed construction. See generally Prelim. Resp. Our Institution Decision construed the terms “specific contact resistivity” and “specific contact resistance” to be interchangeable. Inst. Dec. 11. The Patent Owner Response does not request that we alter this construction. See generally PO Resp. Thus, we maintain this construction. IPR2020-01205 Patent 9,461,167 B2 11 (We address the plain meaning of “a specific contact resistivity . . . of less than 1 Ω-μm2” in Section III.B.2. below.) III. ANALYSIS A. Legal Standards “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) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). Anticipation is a question of fact, as is the question of what a prior art reference teaches. In re NTP, Inc., 654 F.3d 1279, 1297 (Fed. Cir. 2011). “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); see also Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008) (to anticipate a patent claim under 35 U.S.C. § 102, “a single prior art reference must expressly or inherently disclose each claim limitation”). 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 in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 IPR2020-01205 Patent 9,461,167 B2 12 (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)). Additionally, under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates. MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999); In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349-50 (Fed. Cir. 2002). We analyze the asserted ground of unpatentability in accordance with these principles. B. Priority Petitioner contends the challenged claims are not entitled to any priority date before February 7, 2011, rendering Grupp ’483, which is a member of the patent family that includes the ’167 patent, prior art to the ’167 patent. Pet. 14-15, 21-24. A chart provided in the Patent Owner Preliminary Response showing a partial patent family tree for the ’167 patent with annotations by Patent Owner is provided below. IPR2020-01205 Patent 9,461,167 B2 13 Partial Patent Family Tree Prelim. Resp. 8. Petitioner contends that the patentee did not describe the genus of the metal oxide layer recited in claim 1 of the ’167 patent until the patentee filed the claims of U.S. application 13/022,522 (“the ’522 application”) on February 7, 2011. Pet. 15 (citing Ex. 1010, 48; Ex. 1016, Schubert Decl. ¶¶ 97-98). Thus, Petitioner argues that Patent Owner is not IPR2020-01205 Patent 9,461,167 B2 14 entitled to the benefit of any of the priority applications filed before February 7, 2011 (“pre-2011 priority applications”). Further, Petitioner contends that no priority application enables the full scope of a specific contact resistivity less than 1 Ω-m2. Id. at 14-15. For that reason, according to Petitioner, Patent Owner is not entitled to the benefit of any priority application; the priority date of the ’167 patent is no earlier than its filing date, i.e., February 19, 2016; and Grupp ’483 is prior art to the ’167 patent. Id. Patent Owner disputes Petitioner’s contentions. PO Resp. 11-49. According to Patent Owner, the priority date of the ’167 patent is August 1, 2006 (the filing date of U.S. Patent No. 7,084,423, “’423 patent”), and Grupp ’483 is not prior art to the ’167 patent. Id. at 1. As mentioned above, Petitioner makes two sets of priority challenges: (i) challenges based on a purported lack of written description for the challenged claims in the pre-2011 priority applications and (ii) challenges based on a lack of enablement of the challenged claims in all priority applications. We address these sets of challenges separately. Written Description in the Priority Applications We address Petitioner’s priority challenges due to a purported lack of written description for three separate groups of claims: (i) claims 1-3 and 12, which recite an “interface layer comprising a metal oxide,” (ii) claims 6, 8, 10, 11, and 14-16, which more narrowly recite “an oxide of titanium,” and (iii) claim 9, which recites “wherein the contact metal is a metal or stack of metals deposited on the interface layer.” IPR2020-01205 Patent 9,461,167 B2 15 a) Claims 1-3 and 12 Claim 1 recites an “interface layer comprising a metal oxide.” Ex. 1001, 18:37-43. Claim 2 depends from claim 1, and claims 3 and 12 each depend from claim 2. Id. at 18:44-19:5. (1) Parties’ Arguments According to Petitioner, the first time any of the priority applications “arguably disclosed a generic ‘metal oxide’ interface layer is in the originally filed claims of U.S. Patent App. No. 13/022,522 filed on February 7, 2011.” Pet. 21 (citing Ex. 1010, 48 [see claims 15, 16]; Ex. 1016, Schubert Decl. ¶ 97). Petitioner acknowledges that the earlier-filed priority applications (those filed before 2011-“pre-2011 priority applications”) describe a “possible example of a metal oxide interface layer” in the form of a TiO2 [titanium dioxide] spacer layer. Id. (citing Ex. 1001, 17:64-66; Ex. 1016, Schubert Decl. ¶ 98). In fact, Petitioner relies on this description when arguing that Grupp ’483 anticipates claim 1. Id. at 30 (citing Ex. 1016, Schubert Decl. ¶¶ 121-122). At the same time, Petitioner argues that Grupp ’483 can be applied as a prior art reference because the same language in the pre-2011 priority applications fails to provide a written description of the genus of the recited “metal oxide layer.” Id. at 21-24. Petitioner asserts that the relevant question for this written description/priority issue is whether the pre-2011 priority applications’ statement that “[s]pacer layers may be used with lower barriers (e.g., TiO2 has a barrier of less than 1 eV)” provides a written description of the entire genus of metal oxide interface layers. Pet. 22 (citing Ex. 1001, 17:64-66) (alteration by Petitioner). Petitioner contends that the answer is no, arguing some metal oxides present considerably higher barriers than the “barrier of less than 1 eV” ascribed to TiO2. Id. In particular, Petitioner argues IPR2020-01205 Patent 9,461,167 B2 16 “hafnium oxide and zirconium oxide are metal oxides with barriers to aluminum of 2 eV and 2.43 eV, respectively.” Id. (citing Ex. 1029, 4; Ex. 1030, 1;2 Ex. 1016, Schubert Decl. ¶ 102). Patent Owner does not dispute that hafnium oxide and zirconium oxide have considerably higher barriers to metals than TiO2. See generally PO Resp. Patent Owner, however, argues that the ’423 patent (a pre-2011 priority application), as originally filed in 2002, nevertheless supports the genus of “metal oxide” in two ways. PO Resp. 43. First, Patent Owner argues that the specification discloses TiO2 as a species. Id. (citing Ex. 1003, ’423 patent, 17:59-61). Second, Patent Owner argues that the specification discloses oxide spacer/separation layers as a more general genus. Id. at 43-44 (citing Ex. 1003, ’423 patent, 10:49-50). Patent Owner argues that these two disclosures demonstrate that the Acorn inventors possessed the “metal oxide” genus or subgenus. Id. at 44 (citing Ex. 2070, Kuhn Decl. ¶¶ 97-113). Patent Owner provides an analysis by Dr. Kuhn to support its argument that an ordinarily skilled artisan would have envisaged the metal oxide genus based on these disclosures. Id. at 44-46 (citing Ex. 2070, Kuhn Decl. ¶¶ 97-113). Patent Owner also argues that the disclosure in the pre-2011 priority applications of the use of TiO2 as material with a lower barrier does not teach away from the use of materials with higher barriers. PO Resp. 45 (citing Ex. 1003, ’423 patent, 17:61-64; Ex. 2070, Kuhn Decl. ¶ 111). Further, Patent Owner argues that in an unrelated application Petitioner sought a claim to a metal oxide genus after disclosing only three species of 2 For Exhibits 1029 and 1030, we cite to the page numbers added by Petitioner. IPR2020-01205 Patent 9,461,167 B2 17 metal oxides. Id. at 47 (citing Ex. 2099, claim 2, ¶¶ 8, 33, 39, 86, 96, 99, 100, 111, 140, 156, 161). In its Reply, Petitioner argues that there are countless materials that contain metal oxides with just one metal. Pet. Reply 3. Further, Petitioner asserts that a metal oxide can include multiple metals. Id. (citing Ex. 1042 at 211:8-212:3 (Kuhn deposition transcript); Ex. 1047, Schubert Reply Decl. ¶¶ 18-20). Petitioner also argues that metal oxides have varying properties. Id. at 4 (citing Ex. 1047, Schubert Reply Decl. ¶ 51). Further, Petitioner asserts that the claims of the ’167 patent encompass metal oxides that were invented after the priority applications were filed. Id. at 6-7 (citing Ex. 1042, 99:6-23). In its Sur-reply, Patent Owner argues that the purpose of the written description requirement is to prevent over-claiming. PO Sur-reply 11. Patent Owner asserts that the pre-2011 priority applications describe the broader genus of oxides and, because the patentee could have claimed that genus, in this case, there is no concern of the patentee over-claiming metal oxides. Id. Patent Owner also asserts that the disclosure of TiO2 is sufficient to support the genus of metal oxides because it discloses structural features common to members of the genus so that an ordinarily skilled artisan can recognize the member of the genus. PO Sur-reply 12. Patent Owner asserts that, here, the metal oxide is in the spacer layer and a common structural feature of metal oxides used for such a purpose is that they are dielectrics. Id. Further, Patent Owner argues that Petitioner argued for its own patent application that the genus “metal oxide having a small conduction band offset with respect to the source/drain area” was supported by just TiO2, Ta2O5, and ZnO. Id. at 13 (citing Ex. 2099, claims 2-3). IPR2020-01205 Patent 9,461,167 B2 18 (2) Analysis We agree with Petitioner that the pre-2011 priority applications do not describe the recited genus. To support a claim to a genus, a specification must disclose “either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1350 (Fed. Cir. 2010) (en banc). Here, the recited genus is an interface layer comprising a metal oxide, where the interface layer is configured to provide a specific contact resistivity between a contact metal and a semiconductor of than 1 Ω- μm2. Ex. 1001, 18:37-43. It is undisputed that the only species the pre- 2011 priority applications disclose is TiO2, as set forth in the following passage: Two other properties of the dielectric deserve mention. First is the property of the height of the barrier compared to the semiconductor conduction band (for electrons). In making the barrier thinner than a silicide barrier, the tradeoff may be a higher tunnel barrier (e.g., 2 eV for nitride, compared with about half the gap of 0.6 eV for silicide). Spacer layers may be used with lower barriers (e.g., TiO2 has a barrier of less than 1 eV). Nevertheless, even with the higher barrier to electrons, the present inventors have determined that the resistance can still be one hundred times lower than a contact to silicon with a silicide barrier. Id. at 17:59-18:2 (emphasis added). The pre-2011 priority applications incorporate by reference U.S. Patent No. 6,833,556 (“’556 patent”), which describes the use of metal oxides to isolate a transistor’s gate from its channel. Ex. 1005, 7:60-8:22, 13:44-14:20; see, e.g., Ex. 1001, 1:18-21, Ex. 1016, Schubert Decl. ¶ 102. IPR2020-01205 Patent 9,461,167 B2 19 It is undisputed, however, that this description in the ’556 patent of metal oxides used to isolate a gate from its channel does not describe the recited genus. Ex. 1016, Schubert Decl. ¶ 102. The recited genus constitutes an interface layer that is conductive (a specific contact resistivity between the contact metal and the semiconductor of less than 1 Ω-μm2). Id.; Ex. 1001, 18:37-43. The disclosure in the pre-2011 priority applications that “spacer layers may be used with lower barriers (e.g., TiO2 has a barrier of less than 1 eV)” does not describe structural features common to the members of the genus so that one of skill in the art can visualize or recognize the members of the genus. See Ex. 1016, Schubert Decl. ¶¶ 101-105. The disclosure describes one property of TiO2-it has a lower barrier of less than 1 eV, which is not a property of the recited genus as a whole. Hafnium oxide and zirconium oxide are metal oxides with barriers to the metal aluminum of 2 eV and 2.43 eV, respectively. Id. ¶ 102; Ex. 1029, 4; Ex. 1030, 1. As mentioned, Patent Owner argues that the pre-2011 priority applications do not teach away from using materials with barriers of more than 1 eV, noting that the pre-2011 priority applications teach the disclosed techniques may be beneficial for such materials even if they are not as preferred as lower barrier materials. PO Resp. 45 (citing Ex. 1003, ’423 patent, 17:61-64; Ex. 2070, Kuhn Decl. ¶ 111). That argument, however, misses the point. Although the pre-2011 priority applications may not teach away from higher barrier materials, the desirable property that those priority applications taught for TiO2 was that it has a barrier of less than 1 eV, and that is not a property shared by metal oxides as a class. As mentioned, Patent Owner also argues that the structural feature that is common to the members of the genus of metal oxides to be used for IPR2020-01205 Patent 9,461,167 B2 20 spacer layers is that they are dielectrics. PO Sur-reply 12 (citing Ex. 2070, Kuhn Decl. ¶¶ 107, 109). Even if we were to accept that argument, however, Patent Owner cites no evidence that an ordinarily skilled artisan would envision the recited genus merely from the fact that all metal oxides to be used as spacer layers are purportedly dielectrics. See Ex. 2070, Kuhn Decl. ¶¶ 107, 109. The cited testimony from Dr. Kuhn does not support such a contention, as Dr. Kuhn merely testifies that the ’423 patent describes a MIGS separation layer as a dielectric and that dielectrics that do not passivate or only weakly passivate the semiconductor would be desirable. Id. Further, the ’556 patent, which, as mentioned, is incorporated by reference into the ’167 patent and the pre-2011 priority applications, teaches that dielectrics are a broader class than metal oxides. Ex. 1005, 7:60-8:5. The ’556 patent describes that dielectrics can be made from oxides of semiconductors as well as from metals: “the insulator 280 (which may be made of a dielectric such as an oxide of the metal gate or an oxide of a semiconductor).” Id. at 7:60-8:5. Thus, the disclosed use of a dielectric by itself is not the disclosure of a property that would lead an ordinarily skilled artisan to envision the recited genus of metal oxides. In sum, the only disclosed property for the TiO2 species-a lower barrier of less than 1 eV-would not cause an ordinarily skilled artisan to envision the recited genus. TiO2 is also not representative of the recited genus of metal oxides. The metal oxide genus encompasses many underlying species because there are many different metals that can form metal oxides, for example, alkali metals, alkaline earth metals, transition metals, ferrous metals, non-ferrous metals, noble metals, refractory metals, and common metals. Ex. 1047, Schubert Reply Decl. ¶ 18. Further, metal oxides can be formed from more IPR2020-01205 Patent 9,461,167 B2 21 than one metal species. Id. ¶¶ 19, 20. Significantly, important properties for the various metal oxides, such as conductivity,3 vary significantly. Id. ¶¶ 19, 20, 27-51.4 As discussed above, Patent Owner nevertheless argues that the pre- 2011 priority applications describe the recited genus due to the disclosure of oxide spacer/separation layers combined with the disclosure of an interface layer with TiO2. PO Resp. 43. To support that argument, Patent Owner provides an analysis by Dr. Kuhn of how an ordinarily skilled artisan would purportedly envision the recited genus from these disclosures. Id. at 44-46 (citing Ex. 2070, Kuhn Decl. ¶¶ 97-113). We do not credit this analysis by Dr. Kuhn, however, because it relies on unsupported contentions regarding the knowledge of an ordinarily skilled artisan and on the premise that an ordinarily skilled artisan would take a series of mental steps that are not taught or suggested by the pre-2011 priority applications. Dr. Kuhn begins her analysis with the disclosure in the ’423 patent that TiO2 is an example of a “spacer layer” or “separation layer” (the terms being used synonymously) with Ti as a possible metal for the metal- 3 The electrical conductivity of a metal oxide is an important property for the recited genus because claim 1 recites a range of specific contact resistivity for the recited interface layer, and electrical conductivity directly affects the specific contact resistivity of a junction. See Ex. 1001, 18:37-43; Ex. 1047, Schubert Reply Decl. ¶ 30. 4 Dr. Schubert characterizes TiO2 as a semiconductor. Ex. 1047, Schubert Reply Decl. ¶ 51. Patent Owner argues that instead it is a dielectric. PO Sur-reply 7. Even if we were to find that TiO2 is a dielectric, however, important properties of metal oxides would still vary significantly. See Ex. 1047, Schubert Reply Decl. ¶ 51; see also id. ¶¶ 27-50; Ex. 1016, Schubert Decl. ¶ 102. For example, HfO2 is an insulator, whereas InSnO is a relatively good conductor. Ex. 1047, Schubert Reply Decl. ¶ 51. IPR2020-01205 Patent 9,461,167 B2 22 semiconductor junction. Ex. 2070, Kuhn Decl. ¶ 97. Referring to the spacer layer as the “MIGS separation layer,” Dr. Kuhn asserts that an ordinarily skilled artisan would recognize from the TiO2 layer example that an oxide of whatever metal is used as the metal in the metal-semiconductor junction would be desirable. Id. ¶ 98. Dr. Kuhn cites no teaching in the ’423 patent or in any other reference, but further states that an ordinarily skilled artisan would recognize the value of a configuration in which the placement of a metal next to an oxide of that metal “is very likely to be more stable than having the metal adjacent to some other oxide.” Id. According to Dr. Kuhn, the fact that the “’423 patent states the separation layer may be an oxide in general, would have directed [an ordinarily skilled artisan] to metal oxides in particular for reasons I will next explain.” Ex. 2070, Kuhn Decl. ¶ 100. Nevertheless, after stating that metals other than titanium are disclosed in the patent, Dr. Kuhn acknowledges that “not all of these metals have oxides that would be acceptable as a spacer layer, many of them do have such oxides the details of which I describe in paragraphs 101-110.” Id. ¶ 99. Noting that the interface layer may be a passivation layer or a single or compound layer including both a passivating material and an additional separation material, Dr. Kuhn states the layers should be well-behaved materials not displaying deleterious effects that would prevent their use in electrical devices. Id. ¶¶ 101-102. Dr. Kuhn next notes that the ’423 patent states “the interface layers serves to (i) chemically passivate the semiconductor surface . . . and (ii) to displace the semiconductor sufficiently to eliminate or at least reduce the effect of MIGS.” Ex. 2070, Kuhn Decl. Ex. ¶ 103 (quoting Ex. 1003, ’423 patent, 9:50-53). According to Dr. Kuhn, because the ’423 patent explains that the passivation layer alone may not be sufficient to provide MIGS IPR2020-01205 Patent 9,461,167 B2 23 separation, an additional MIGS separation may be required. Id. ¶ 104. Dr. Kuhn states “[f]rom this description, [an ordinarily skilled artisan] would understand that the separation layer, when paired with a passivation layer, does not itself perform a passivation function, but is solely intended to provide the proper thickness and band structure so that the MIGS states arising in the metal cannot pin the Fermi level of the junction.” Id. (emphasis omitted). Dr. Kuhn next notes that the ’423 patent discloses that passivation layers using N and/or O may not require distinct separation layers and asserts that “[f]rom this [an ordinarily skilled artisan] would understand that a passivation material that is also an oxide (such as silicon dioxide or silicon oxy-nitride) would not be considered the distinct separation layers recited in the challenged claims, but rather a passivation layer.” Ex. 2070, Kuhn Decl. ¶ 105 (citing Ex. 1003, ’423 patent, 10:5-7) (emphasis omitted). Based on the ’423 patent’s disclosure that “in some cases such passivation layers are combined with separation layers (e.g., made of an oxide) to complete the interface layer” (Ex. 1003, 10:48-50), Dr. Kuhn asserts that “[an ordinarily skilled artisan] would understand that the separation layer is intended to be an oxide, but not one with the function of passivation” (Ex 2070, Kuhn Decl. ¶ 106). Testifying that “the patent provides extensive teachings on metals versus non-metals” and the relationship between metals, conductive materials, and conductors, (Ex. 2070, Kuhn Decl. ¶ 108), Dr. Kuhn posits that an ordinarily skilled artisan would have understood or recognized that: (i) “using a metal for MIGS separation would not provide MIGS separation (the metal would simply make more MIGS states)”; IPR2020-01205 Patent 9,461,167 B2 24 (ii) “using metal-like materials for the MIGS separation layer (i.e., metals, semi-metals (metalloids), and semiconductors would carry a similar risk of not fully suppressing MIGS states due the band structure of the materials”; (iii) “the desired embodiments for the MIGS separation layer in a two-layer (passivation layer + separation layer) arrangement would be dielectrics and additionally would include (as per the patent’s clarification that a passivation layer is distinct from a separation layer) dielectrics that do not passivate or only weakly passivate the semiconductor”; (iv) “the position of the MIGS separation layer (always between the metal and the passivation layer) suggests metal oxides of the parent metal to improve chemical stability”; (v) looking to “the complete list of metals provided in the patent (Al, In, Ti, Cr, Ta, Cs, Mg, Er, Yb, Mn, Pb, Ag, Y, Zn, Pt, Au, W, Ni, Mo, Cu, Co and Pd) . . . the most appropriate metal oxides would be conventional insulators with significant preexisting data due to the world-wide emphasis on high-k dielectrics at the time of the patent (families such as aluminum oxide, titanium oxide, and tantalum oxide)”; (vi) there was “the possibility of using insulators from materials well-established in the semiconductor industry, although perhaps not as well researched as the high-k materials (families such indium oxide, magnesium oxide, zinc oxide, tungsten oxide, molybdenum oxide and yttrium oxide)”; (vii) “certain materials might have appropriate insulating properties but would not be appropriate for semiconductor fabrication due either to well-known mismatches between materials properties and typical semiconductor processing conditions (e.g. families such as silver oxide and gold oxide) or environmental issues (e.g. families such as lead oxide)”; and (viii) “[t]he remaining oxides would be recognized as inappropriate choices as they are semiconductors or semimetals (metalloids).” Ex. 2070, Kuhn Decl. ¶¶ 109-110. IPR2020-01205 Patent 9,461,167 B2 25 Much of Dr. Kuhn’s analysis is premised on her assessment of the mental steps that an ordinarily skilled artisan theoretically might have taken after reviewing the minimal disclosure in the ’423 patent. The ’423 patent does not discuss any properties of metal oxides (other than the lower barrier of the metal oxide TiO2) or design considerations concerning the selection of particular oxides to use in the claimed structure, particularly in the context of MIGS separation. And Dr. Kuhn cites very little, if any, evidence to support her testimony regarding the knowledge of an ordinarily skilled artisan. Thus, we do not credit this analysis as showing that an ordinarily skilled artisan would have found that the inventors of the pre-2011 priority applications possessed the recited genus. See Ariad, 593 F.3d at 1352 (a description that merely renders the invention obvious does not satisfy the written description requirement); Power Oasis Inc. v. T-Mobile USA, 522 F.3d 1299, 1306 (Fed. Cir. 2008) (“Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.”) (quoting In re Huston, 308 F.3d 1267, 1277 (Fed. Cir. 2002), quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571-72 (Fed. Cir. 1997)); Martin v. Mayer, 823 F.2d 500, 505 (Fed. Cir. 1987) (holding that the written description requirement is “not a question of whether one skilled in the art might be able to construct the patentee’s device from the teachings of the disclosure . . . . Rather, it is a question whether the application necessarily discloses that particular device”) (emphasis original). As for Patent Owner’s argument that the policy concern for the written description requirement does not apply here because the patentee purportedly had written description support for even broader subject matter than the recited genus, we disagree. PO Sur-reply 11. First, the written description for priority is a statutory requirement that cannot be avoided IPR2020-01205 Patent 9,461,167 B2 26 based merely on policy arguments. 35 U.S.C. § 120. Second, even with respect to the concern of over-claiming, the mere fact that the patentee purportedly had written description support for subject matter broader than claim 1 would not alleviate that concern. Written description support is only one of a number of requirements for patentability, and it would still be over- claiming for a patentee to obtain a claim that it did not describe to avoid a prior art rejection for a broader claim that it described. As mentioned, Patent Owner argues that because Petitioner sought claims to a “metal oxide having a small conduction band offset with respect to the source/drain area” while purportedly only disclosing TiO2, Ta2O5, and ZnO, Petitioner’s position in that case is inconsistent with its position here. PO Resp. 47 (citing Ex. 2099, claim 2, ¶¶ 8, 33, 39, 86, 96, 99, 100, 111, 140, 156, 161); PO Sur-reply 13 (citing Ex. 2099, claims 2-3). On this record, we do not reach such a conclusion. Patent Owner cites to the publication of the involved application (Ex. 2099), which shows that Petitioner has filed such claims and that the involved application discloses TiO2, Ta2O5, and ZnO, but Patent Owner provides no analysis of how the purported support for a genus based on the disclosure of three species would conflict with an alleged lack of a support for a genius based on one species. Patent Owner further does not set forth any arguments that have been made in the prosecution of the involved application (Ex. 2099). See PO Resp. 47; PO Sur-reply 13. As for Patent Owner’s argument that Petitioner’s decision not to challenge claims 17 and 23 of the ’395 patent indicates that the pre-2011 priority applications support the recited genus, we disagree. PO Sur-reply 11. Petitioner filed petitions challenging the ’395 patent in IPR2020-01207 and IPR2020-01282. Petitioner did not challenge claims 17 and 23 of the IPR2020-01205 Patent 9,461,167 B2 27 ’395 patent in IPR2020-01207. See IPR2020-01207, Paper 2, 6. Petitioner, however challenged those claims in IPR2020-01282. See IPR2020-01282, Paper 2, 5. We cannot speculate as to why Petitioner chose not to challenge claims 17 and 23 of the ’395 patent in IPR2020-01207. Whatever unexpressed reason Petitioner had for not challenging those claims in that proceeding is not in the record and is not evidence for consideration. In sum, after considering all the arguments and evidence, we find that the pre-2011 priority applications do not describe the recited genus. Thus, Patent Owner is not entitled to the benefit of any pre-2011 priority applications for claims 1-3 and 12, and Grupp ’483 is prior art for those claims. b) Claims 6, 8, 10, 11, and 14-16 Each of claims 6, 8, 10, 11, and 14-16 directly or through dependency recites: “the metal oxide of the interface layer comprises an oxide of titanium.” Claims 6, 14, and 16 each directly recite this limitation. Ex. 1001, 18:55-19:21. Claims 8, 10, and 11 each depend from claim 6, and claim 15 depends from claim 14. Id. The Petition does not address whether the pre-2011 priority applications describe the breadth of the oxide-of-titanium limitation. See Pet. 20-25. Instead, the Petition argues that the pre-2011 priority applications do not describe the breadth of the broader genus of metal oxides. Id. The Patent Owner Response asserts that the mere fact that the pre-2011 priority applications may not describe the broader class of metal oxides does not mean they fail to describe the breadth of the class of oxides of titanium. PO Resp. 39-43. In its Reply, Petitioner does not dispute this argument by Patent Owner, but instead presents substantive arguments as to why the pre-2011 priority applications purportedly fail to describe the IPR2020-01205 Patent 9,461,167 B2 28 breadth of the recited oxides of titanium. Pet. Reply 7-12. In its Sur-reply, Patent Owner argues that Petitioner’s reply arguments are belated and should not be considered. PO Sur-reply 5-7. We agree with Patent Owner. “[A p]etitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.” Consolidated Trial Practice Guide5 73; see also 37 C.F.R. § 42.23(b). Here, Petitioner’s breadth challenge to the written description support for the genus of “the metal oxide of the interface layer comprises an oxide of titanium” recited in claims 6, 8, 10, 11, and 14-16, was part of Petitioner’s prima facie case, which could have, and should have, been presented with the Petition. Thus, Petitioner could not properly wait until its Reply to specifically challenge the description support for the breadth of that class in the pre-2011 priority applications. See Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330-31 (Fed. Cir. 2019); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369-70 (Fed. Cir. 2016); Ariosa Diagnostics v. Verinata Heath, Inc., 805 F.3d 1359, 1368 (Fed. Cir. 2015). Accordingly, we will not consider the breadth challenge to oxides of titanium that Petitioner presented for the first time in its Reply. As for the breadth challenge presented in the Petition-that the pre- 2011 priority applications do not describe the breadth of the class of metal oxides, that challenge is inapplicable here because claims 6, 8, 10, 11, and 14-16 narrow the recited class to an oxide of titanium, which is a far 5 Consolidated Office Trial Practice Guide (Nov. 2019), available at https://www.uspto.gov/about-us/news-updates/consolidated-trial-practice- guide-november-2019. IPR2020-01205 Patent 9,461,167 B2 29 narrower class. Dr. Schubert provides examples of numerous metal oxides that do not comprise oxides of titanium. Ex. 1016, Schubert Decl. ¶ 102 (hafnium oxide and zirconium oxide); Ex. 1047, Schubert Reply Decl. ¶¶ 18, 19 (see the compounds identified in that paragraph beyond titanium dioxide), 20. Petitioner does not dispute that the pre-2011 priority applications disclose a species within the scope of the recited genus. Pet. 20-25. To the contrary, Petitioner relies on one of the pre-2011 priority applications (Grupp ’483) as disclosing a species (with TiO2) as proof that claims 6, 8, 10, 11, and 14-16 are anticipated. See Id. at 35-39. Thus, we determine that Petitioner has not proven that the pre-2011 priority applications fail to describe the genus of the metal oxide of the interface layer comprises an oxide of titanium. Thus, Petitioner has not proven that Patent Owner is not entitled to the benefit of the pre-2011 priority applications for claims 6, 8, 10, 11, and 14-16 due to a lack of written description support. c) Claim 9 Claim 9 recites: “wherein the contact metal is a metal or stack of metals deposited on the interface layer.” Ex. 1001, 18:63-65. Petitioner argues that none of the priority applications describe the breadth of the recited contact metal. See Pet. 24-25 (citing Ex. 1001, 11:15-19, 13:45-67, Figs. 6, 7a-7d; Ex. 1005, 4:64-67, 7:8-12, 7:49-53, 8:67-9:6, 14:54-67, Figs. 1-3, 6B; Ex. 1016, Schubert Decl. ¶¶ 107-108). Petitioner contends that although the priority applications describe depositing a metal on an interface layer, and although they describe various examples of metals for depositing on the interface layer, none of the priority applications describes depositing a stack of metals on an interface layer. Id. According to IPR2020-01205 Patent 9,461,167 B2 30 Petitioner, at most, the priority applications describe depositing a single body of metal or alloy on an interface layer. Id. (citing Ex. 1001, 11:15-19, 13:45-67, Figs. 6, 7a-7d; Ex. 1016, Schubert Decl. ¶ 107). Further, Petitioner argues that the same is true of the incorporated-by-reference disclosure of the ’556 patent. See id. (citing Ex. 1005, 4:64-67, 7:8-12, 7:49-53, 8:67-9:6, 14:54-67, Figs. 1-3, Fig. 6B; Ex. 1016, Schubert Decl. ¶¶ 107-108). Patent Owner does not address or present any counterarguments on this priority issue. See generally PO Resp. After reviewing the record, we agree with the Petitioner that none of the priority applications describe depositing a stack of metals on an interface layer. See, e.g., Ex. 1001, 11:15-19, 13:45-67, Figs. 6, 7a-7d; Ex. 1005, 4:64-67, 7:8-12, 7:49-53, 8:67-9:6, 14:54-67, Figs. 1-3, Fig. 6B; Ex. 1016, Schubert Decl. ¶¶ 106-108. Thus, none of the priority applications describe the breadth of the contact metal recited in claim 9. See Ex. 1016, Schubert Decl. ¶¶ 106-108. Accordingly, Patent Owner is not entitled to the benefit of any priority application for claim 9, and Grupp ’483 is prior art for that claim. Enablement in the Priority Applications Independent claim 1 recites “the interface layer configured to provide a specific contact resistivity between the contact metal and the semiconductor of less than 1 Ω-μm2.” Ex. 1001, 18:37-43. Claims 2, 3, 6, 8-12, and 14-16 each depend directly or indirectly from claim 1. Id. at 18:44-19:21. Petitioner argues that Patent Owner is not entitled to the filing dates of its priority applications for any challenged claim because none of the priority applications enable the recited range of a specific contact resistivity. IPR2020-01205 Patent 9,461,167 B2 31 To illustrate the point, Petitioner offers an annotated version of Figure 8 of the ’167 patent, as shown: Petitioner’s Annotated Version of Figure 8 Pet. 17. Petitioner argues that this figure shows how “the nadir of [the] ‘total current’ curve indicates a range of specific contact resistances down to and including approximately zero that an ordinarily skilled artisan could not have attained by following the teachings of the ’167 Patent and its parent applications.” Id. at 18. Petitioner argues that the challenged claims encompass a range of specific contact resistivities down to and including approximately zero that cannot be achieved and thus cannot be enabled by the priority applications. Id. at 20. Petitioner relies on MagSil Corp. v. Hitachi Global Storage Techs., Inc., 687 F.3d 1377 (Fed. Cir. 2012). In that case, the claims recited that “applying a small magnitude of electromagnetic energy to the junction . . . causes a change in the resistance by at least 10% at room temperature.” Id. at 1381 (alteration in original). The patent owner in MagSil offered testimony of an expert, who opined that “a person of ordinary skill in the art could work from the [] patent and make tunneling junctions with a resistive IPR2020-01205 Patent 9,461,167 B2 32 change between 100% and 120% without undue experimentation.” Id. at 1382. The Federal Circuit, however, found that the testimony suggesting a resistive change up to 120% “only reaches a lower-end of the claimed scope,” as “[t]he invention claims resistive changes from at least 10% up to infinity.” Id. The Federal Circuit held that “the asserted claims are invalid for lack of enablement because their broad scope is not reasonably supported by the scope of enablement in the specification.” Id. at 1384. Patent Owner asserts that “[t]he vertical axis in Figure 8 has neither a scale nor numbers and therefore cannot be meaningfully compared to the numerical values recited in the claims”; that Petitioner “failed to establish that the ‘[u]nachievable’ region in Figure 8 is an appreciable portion of the claimed range”; and that “[an ordinarily skilled artisan] would understand that the resistivity values achievable with the invention are quite low, perhaps even negligible or too low to measure.” PO Resp. 14-15 (citing Ex. 2070, Kuhn Decl. ¶¶ 75, 77) (first alteration by Patent Owner). Next, Patent Owner argues that “Figure 8 should not be understood, and would not have been understood by [an ordinarily skilled artisan], to imply zero specific contact resistivity as the petition asserts” because “[an ordinarily skilled artisan] would understand from the shapes of the curves on Figure 8 that the vertical scale is logarithmic and therefore does not extend down to zero.” PO Resp. 15-16 (citing Ex. 2070, Kuhn Decl. ¶¶ 76-77, 91). Patent Owner also argues that “Figure 8 is a ‘conceptual’ diagram meant to illustrate the principles of the physics involved, not any absolute values,” that “[t]he particular curves illustrated on Figure 8 are for one set of materials (semiconductor, interface, and metal), and that “[i]f one or more of those materials is changed, then the curves would change.” PO Resp. 16-17 (citing Ex. 2070, Kuhn Decl. ¶¶ 80-82). Patent Owner contends that “even IPR2020-01205 Patent 9,461,167 B2 33 if there is an unachievable region for one combination of materials, another set of materials would almost certainly have a minimum that is less (i.e., in the so-called ‘unachievable’ region).” Id. at 18. Patent Owner then argues that “[t]he fact that some values of specific contact resistance may not be possible would simply mean that there is an inherent lower limit, below which Acorn’s specification need not teach how to achieve.” PO Resp. 18-19 (emphasis omitted). According to Patent Owner, “[t]he issue of enablement of open-ended ranges is a well-developed area of the law, and the controlling rule is that the specification need not enable the entirety of an open-ended range when there is an ‘inherent’ limit on the open end of the range.” Id. at 19. Patent Owner relies on Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361 (Fed. Cir. 2007), Rimfrost AS v. Aker Biomarine Antarctic AS, PGR2018-00033, Paper 9 (Aug. 29, 2018), and Ex parte Smith, Appeal No. 2017-010042, 2019 WL 6173250 (PTAB Sept. 30, 2019). Patent Owner also asserts that its position “is a corollary to the related principle that a patentee need not show that non- operable embodiments are enabled.” PO Resp. 21. Patent Owner contends that the Board and courts regularly decline to follow MagSil where, as here, there is an inherent limit on the open end of a range. PO Resp. 22 (citing Snap-on Inc. v. Milwaukee Electric Tool Corp., IPR2015-01242, Paper 10 (PTAB Dec. 2, 2015); Thermo Fisher Scientific Inc. v. Regents of University of California, IPR2018-01347, Paper 10 (Jan. 22, 2019); PerkinElmer Health Sciences, Inc. v. Agilent Technologies, Inc., 962 F. Supp. 2d 304 (D. Mass. 2013)). Patent Owner additionally claims that “[an ordinarily skilled artisan] would have understood there to be an inherent lower limit for specific contact resistivity for a given set of IPR2020-01205 Patent 9,461,167 B2 34 materials,” and that “Figure 8 . . . clearly illustrates that lower limit,” as “the minimum of the ‘Total’ curve.” PO Resp. 24. Patent Owner further cites testimony from Dr. Kuhn that “Figure 8 conveys to [an ordinarily skilled artisan] a simple experiment to find a minimum or near-minimum specific contact resistivity for a given set of materials” and that “[an ordinarily skilled artisan] could have run simple experiments on ‘test chip[s]’ in a ‘development fab’ to vary the thickness of the interface layer, measure the specific contact resistance by well-known methods, and thereby determine the minimum or a near-minimum specific contact resistance and corresponding interface layer thickness.” PO Resp. 26-27 (citing Ex. 2070, Kuhn Decl. ¶¶ 83-87). Patent Owner argues that “[an ordinarily skilled artisan] could have repeated that experiment with different materials, aided by the teachings (materials and interface layer thickness ranges) in the [] patents, until an acceptably low specific contact resistance was found” and that “[t]he amount of experimentation to do so would not have been undue.” Id. at 26-27 (citing Ex. 2070, Kuhn Decl. ¶¶ 87-88). Petitioner responds that Patent Owner “asks the Board to rewrite the claims to include some unspecified ‘inherent lower limit’” and that if the Patent Owner “wanted the claims to include some lower limit,” it “could have attempted to remedy the claims via Motion to Amend.” Pet. Reply 17- 18. Petitioner argues that the disclosures “fail to even hint at what that purported ‘inherent lower limit’ may be or how achieve it” and that “[n]either Figure 8 nor anything else in the specification discloses exemplary materials, thicknesses, or any other means for achieving the full range of claimed SCRs [specific contact resistivities] (e.g., lower than 1 Ω-μm2 and approaching 0 Ω-μm2).” Id. at 19-20 (emphasis omitted). IPR2020-01205 Patent 9,461,167 B2 35 We begin our analysis by noting that Petitioner has the burden of proving that Patent Owner is not entitled to the benefit of its priority applications. Dynamic Drinkware, 800 F.3d at 1378. Neither party asks for a construction of the subject claim language, and we determine that the plain meaning of “a specific contact resistivity . . . of less than 1Ω μm2” would encompass all specific contact resistances below 1 Ω-μm2 and down to zero. As noted above, the parties both focus on Figure 8. Petitioner argues that it shows a region below the minimum of the Total Current curve that is not enabled. See Pet. 17-20; Ex. 1016, Schubert Decl. ¶ 88 (explaining that the sum of the resistance to tunneling current with and resistance to current due to electron emission depicted in Fig. 8 “leaves a range of specific contact resistances that cannot be achieved using the techniques in the ’167 Patent”); see also id. ¶ 89 (“[T]he claims encompass something that cannot be achieved according to the ’167 Patent: specific contact resistances all the way down to and including approximately zero”). Patent Owner argues that the figure is not meaningful because it does not have scales on the axes, because it may be logarithmic, and because it may show resistivity values that are negligible or too low to measure. PO Resp. 14-16. We find these arguments somewhat off the mark, because the issue we need to resolve is whether the disclosure enables the specific numerical range recited in the claims. As Dr. Kuhn observes, Figure 8 merely illustrates how the tunneling resistivity increases as the thickness of the interface layer increases, the electron emission resistivity decreases as the thickness increases, and the how those behaviors affect the total current. See Ex. 2070, Kuhn Decl. ¶¶ 73-75. We agree that one cannot discern any IPR2020-01205 Patent 9,461,167 B2 36 “numerical values of specific contact resistance” from Figure 8. See id. ¶ 75. As for the recited range, Patent Owner does not dispute, and the evidence shows, that the disclosure does not enable specific contact resistance down to zero. Ex. 1016, Schubert Decl. ¶¶ 87-90. Instead, Patent Owner argues that one of skill in the art would have understood there to be an “inherent lower limit” and that the claims are enabled because one of skill in the art could achieve that lower limit through experimentation based on the disclosure of patent. We are not persuaded by Patent Owner’s argument, for two main reasons. First, we do not agree that the cases cited by Patent Owner establish that the enablement requirement is satisfied if one of skill in the art could experiment in accordance with the disclosure to find a practical end of an open ended range recited in a claim. Patent Owner principally relies on Andersen Corp. v. Fiber Composites, but the Federal Circuit in that case affirmed the jury verdict of enablement because “the upper limit of the Young’s modulus of the structural member would lie somewhere between the Young’s modulus of the wood fiber and that of the polymer used in the composition.” 474 F.3d at 1377. In other words, there were two known quantities that provided a fixed range. That is not the case here, where Patent Owner does not point to any such predefined limits. Patent Owner also cites a district court case, PerkinElmer Health Scis., Inc. v. Agilent Techs., Inc., 962 F. Supp. 2d 304, 310 (D. Mass. 2013). That case is not directly on point, because it was considering claim construction and not enablement, but that court also found an existing practical upper limit to the IPR2020-01205 Patent 9,461,167 B2 37 claimed range of molecular weights, explaining that “the largest known proteins at the time of patenting had a high, but definite, mass.” 6 Id. We also disagree with Patent Owner’s suggestion that its position is supported by the principle that “a patentee need not show that non-operable embodiments are enabled.” PO Resp. 21. It would be both circular and contrary to the important policy underlying the enablement requirement to allow it to be avoided by argument that subject matter within the scope of the claims that is not enabled may simply be disregarded as “inoperable.” See Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1368 (Fed. Cir. 2012) (“This is not how patent law works. When you claim a concentration range of 0.0001-5% w/v (as claim 2), you can’t simply disavow the invalid portion and keep the valid portion of the claim. If everything up to 0.001% w/v is admittedly not enabled, then the entire claim is invalid.”). In re Cook, 439 F.2d 730 (CCPA 1971), cited by Patent Owner, explains that the presence of inoperative embodiments within the claim scope is permissible “so long as it would be obvious to [a skilled artisan] how to make the embodiment operative rather than inoperative.” Id. at 734-35. In re Cook is inapplicable here because neither party has argued or offered any evidence that it would have been obvious to skilled artisan how to make the lower part of the recited range operative or enabled. 6 Patent Owner additionally cites several Board decisions in inter partes reviews and an ex parte appeal. They are not binding on us, and we find them unpersuasive because they are based on different facts. See Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1572 (Fed. Cir. 1991) (explaining the “appropriateness [of open-ended claims] depends on the particular facts of the invention, the disclosure, and the prior art”). IPR2020-01205 Patent 9,461,167 B2 38 Second, even if Patent Owner could rely on experiments based on the disclosure to find an “inherent lower limit,” it has not alleged that the results would reveal a lower bound that would fall into the claimed range. Instead, Patent Owner and its expert assert that “Figure 8 conveys to [an ordinarily skilled artisan] a simple experiment to find a minimum or near-minimum specific contact resistivity for a given set of materials” and that “[i]f desired, [an ordinarily skilled artisan] could have repeated that experiment with different materials, aided by the teachings (materials and interface layer thickness ranges) in the Acorn patents, until an acceptably low specific contact resistance was found” or, as described by Dr. Kuhn, until “an acceptably low specific contact resistance was found.” PO Resp. 26-27; Ex. 2070 ¶ 88. But even if we accept those assertions as true, they show only that the disclosure enables experimentation to determine a resistance that was “suitable” or “acceptably low,” and we fail to see how that identifies a specific contact resistance that would form an inherent lower end of the claimed range of less than 1 Ω-μm2. We also find Dr. Kuhn’s “inherent lower limit” analysis flawed. We agree that the minimum of the “Total Current” curve in Figure 8 represents an inherent lower limit of the contact resistance for a specific set of materials. See Ex. 2070, Kuhn Decl. ¶ 89. However, Dr. Kuhn asserts, with reference to the annotated version of Figure 8 below, that “‘specific contact resistivity less than X’ really means X > SCR ≥ Y, where Y is an inherent lower limit.” Id. ¶ 90 (emphasis added). IPR2020-01205 Patent 9,461,167 B2 39 Figure 8 as Annotated by Dr. Kuhn (Ex. 2070 ¶ 90). We find Dr. Kuhn’s interpretation of the claim language to present a claim construction issue that was not raised in the Patent Owner Response and is now waived. (See Paper 25, 8 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.”).) But we also disagree with it, at least to the extent it is represented in the Figure, because it considers only one physical system, where the claims are not so limited. We read the claim language-“interface layer configured to provide a specific contact resistivity between the contact metal and the semiconductor of less than 1 Ω-μm2”-to mean that the claims encompass devices with interface layers that are otherwise within their scope and in which the minimum of the “Total Current” curve falls between 1 Ω-μm2 and zero. This means that any “inherent lower limit” would be the lowest resistance that could be achieved for an interface layer in any physical device that meets the other limitations of the claims. See Ex. 2070, Kuhn Decl. ¶¶ 81-82 (describing and illustrating different curves for different physical systems). IPR2020-01205 Patent 9,461,167 B2 40 Petitioner provides evidence that “[e]ven two years after the earliest Priority Application was filed, [Patent Owner] had not achieved-and, accordingly, had not enabled-the full range of the claimed SCRs,” as “the lowest reported SCR values that [Patent Owner] was able to achieve was approximately 300 Ω-μm2,” and that “those values were achieved with a silicon nitride interface layer (not the claimed metal oxide).” Pet. Reply 20- 21 (citing Ex. 1046, Fig. 3; Ex. 1047, Schubert Reply Decl. ¶¶ 80-81) (emphasis omitted). Petitioner provides further evidence that “after over a decade of additional research and innovation, researchers in 2013 finally reported achieving an SCR value of about 0.1 Ω-μm2 using an interface layer material-ZnO-not disclosed or contemplated by the Priority Applications.” Id. at 22 (citing Ex. 1041, 2). Patent Owner responds that it “was not required to demonstrate the full range of its invention’s possibilities” and “[t]hat [it] did not continue to optimize its invention is irrelevant.” PO Sur-reply 19. We agree that Patent Owner had no obligation to optimize, or even practice, the patented inventions, but this evidence does tend to suggest that achieving at least some of the claimed range was not a simple matter of trying various combinations of disclosed materials. Cf. MagSil, 687 F.3d at 1382 (relying on the patent owner’s post-filing activities when assessing enablement). Patent Owner also argues that “[r]eferring to a resistivity or resistance range with an unspecified lower end is ‘common in this art.’” PO Resp. 27 (quoting Ex. 2070, Kuhn Decl. ¶ 91 and citing, e.g., Ex. 2034, 3:27-39; Ex. 2035, 3:23-24). We conclude that unrelated patents, with entirely different disclosures and claims, are not pertinent to our analysis, particularly given that it has not been established that they do not also have enablement problems. IPR2020-01205 Patent 9,461,167 B2 41 Finally, Patent Owner argues that a Primary Patent Examiner “having deep familiarity with this technology in general and [Patent Owner’s] patents in particular, recently allowed nine Acorn claims reciting ‘a specific contact resistivity of less than 1 [or 10] Ω∙μ2’ after considering the arguments made in the petition.” PO Resp. 31 (emphasis omitted). The record does show that the Examiner initialed the IDS entries for ten IPR petitions in this family and ten copies of the Schubert Declaration. See Ex. 2062, 349-355. However, we are unable to discern the extent to which she considered the enablement issue and, as such, we will reach our own result from our substantially more developed record on this issue. For the reasons given above, we conclude that (1) the plain language of the challenged claims encompasses specific contact resistances down to zero, (2) Petitioner has proven with undisputed evidence that the disclosures of the priority applications do not enable resistances down to zero, (3) the record does not indicate there is an “inherent lower limit” for specific contact resistances that would satisfy the requirement that the full scope of the claims be enabled in the priority applications, and (4) because Petitioner has shown that the subject matter of the challenged claims is not enabled in the priority applications, the challenged claims are not entitled to the benefit of the filing dates of the priority applications. Thus, Grupp ’483 is prior art for each of the challenged claims. C. Anticipation Petitioner contends that Grupp ’483 discloses every element of every challenged claim. Pet. 25-42. Patent Owner does not dispute this contention. PO Resp. 50 (“There are no disputes in this IPR regarding whether the prior art reference (Acorn’s own Grupp ’483 patent) teaches any of the claim limitations.”). Patent Owner argues, however, that it would be IPR2020-01205 Patent 9,461,167 B2 42 inconsistent to use Grupp ’483 as prior art to anticipate the challenged claims while denying Patent Owner the benefit of priority applications due to a lack of enablement in the priority applications of the recited range of specific contact resistivity. PO Resp. 28-30. We disagree. “The standard for what constitutes proper enablement of a prior art reference for purposes of anticipation under section 102 [] differs from the enablement standard under section 112.” Rasmusson v. SmithKline Beecham Corp., 413 F.3d 1318, 1325 (Fed. Cir. 2005). Enablement under section 112, which is required for priority under section 120, requires enablement of the full breadth of a claim. Wyeth and Cordis Corp. v. Abbott Laboratories, 720 F.3d 1380, 1384 (Fed. Cir. 2013); MagSil, 687 F.3d at 1384; 35 U.S.C. § 120. Enablement for anticipation does not; rather it requires only enablement of an embodiment or embodiments that fall within the scope of the claim. Chester v. Miller, 906 F.2d 1574, 1577 (Fed. Cir. 1990) (“a CIP's claim for a genus might not be enabled by a parent's disclosure, but that parent may enable a species that anticipates the CIP's claim for a genus . . . . the Court of Custom and Patent Appeals [] made clear the differences between the requirements for claim-anticipating disclosures and for claim- supporting disclosures”) (citing In re Lukach, 442, F.2d 967, 969-970 (CCPA 1971)). Here, the enablement challenge for priority is for a lack of enablement of the full breadth of the recited range, and in particular, a lack of enablement of the lower part of the recited range (that which is at or near zero). No party has argued that the upper part of the recited range (just below 1 Ω-μm2) is not enabled by either the priority applications or Grupp ’483. See, e.g., Pet. 20; PO Resp. 1-2; Pet. Reply 27-28; PO Sur-reply 17- 18. And enablement by a prior art patent is presumed. In re Antor Media IPR2020-01205 Patent 9,461,167 B2 43 Corp., 689 F.3d 1282, 1287 (Fed. Cir. 2012) Impax Labs., Inc. v. Aventis Pharm., Inc., 545 F.3d 1312, 1316 (Fed. Cir. 2008); Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003). Thus, the record does not reflect an inconsistency in holding the priority applications as not enabling the breadth of the recited range while treating Grupp ’483 as enabling the upper part of the range for anticipation. As set forth below, we find that Petitioner has proven that Grupp ’483 anticipates every challenged claim. 1. Claim 1 Petitioner argues that Grupp ’483 discloses a junction, citing Grupp 483’s disclosure that “the present invention provides an electrical junction.” Pet. 26 (citing Ex. 1015, Grupp ’483, 3:44-47). Petitioner also argues that Grupp ’483 discloses an interface layer disposed between a contact metal and a semiconductor, quoting Grupp ’483’s disclosure that “an interface layer is disposed between and in contact with a metal and a semiconductor.” Id. (quoting Ex. 1015, Grupp ’483, 4:20-27) (emphasis omitted). Further, Petitioner contends that Grupp ’483 discloses “the semiconductor comprising a source or drain of a transistor,” quoting Grupp ’483’s disclosure that “the junction of the present invention can be used in making contacts to source or drain implanted wells.” Id. at 27 (quoting Ex. 1015, Grupp ’483, 19:11-15). Petitioner asserts that Grupp ’483 discloses an interface layer configured to provide a specific contact resistivity between the contact metal and the semiconductor of less than 1 Ω-μm2, quoting Grupp ’483’s disclosure of “minimum specific contact resistances of . . . even less than or equal to approximately 1 Ω-μm2 may be achieved for such junctions in accordance with the present invention.” Id. at 28 (quoting Ex. 1015, Grupp ’483, 6:1-5) (alteration in original). As mentioned, no IPR2020-01205 Patent 9,461,167 B2 44 party has argued that the upper part of the recited range (just below 1 Ω- μm2) is not enabled Grupp ’483, and enablement by a prior art patent is presumed. Antor 689 F.3d at 1287; Impax Labs., 545 F.3d at 1316; Amgen, 314 F.3d at 1355. Further, Petitioner argues that Grupp ’483 discloses an interface layer comprising a metal oxide and an oxide of a semiconductor, citing Grupp ’483’s disclosure of the use of TiO2 as a metal oxide and of the use of an oxide of a semiconductor. Id. at 29. After reviewing Petitioner’s arguments and evidence, we find that Petitioner has proven that Grupp ’483 anticipates claim 1. 2. Claim 2 Claim 2 recites the electrical junction of claim 1, “wherein the oxide of the semiconductor of the interface layer has a thickness of approximately 0.1 nm to 5 nm.” Ex. 1001, 18:44-46. For this limitation, Petitioner quotes Grupp ’483’s disclosure that the interface layer includes or is made up of a passivation layer with a thickness of between approximately 0.1 nm and about 5 nm.” Pet. 30 (quoting Ex. 1015, Grupp ’483, 10:66-11:1). Petitioner also cites Grupp ’483’s disclosure that the interface layer includes a passivating material such as an oxide of the semiconductor. Id. (citing Ex. 1015, Grupp ’483, 3:53-56). After reviewing Petitioner’s arguments and evidence, we find that Petitioner has proven that Grupp ’483 anticipates claim 2. 3. Claim 3 Claim 3 recites the electrical junction of claim 2, “wherein the semiconductor comprises an n-type doped source or drain of a transistor.” Ex. 1001, 18:47-49. Dr. Schubert sets forth how Grupp ’483 discloses that the semiconductor can be both (1) n-type doped and (2) the source or drain of a transistor.” Ex. 1016, Schubert Decl. ¶ 133. After reviewing IPR2020-01205 Patent 9,461,167 B2 45 Petitioner’s arguments and evidence, we find that Petitioner has proven that Grupp ’483 anticipates claim 3. 4. Claim 6 Claim 6 recites the electrical junction of claim 2, “wherein the metal oxide of the interface layer comprises an oxide of titanium.” Ex. 1001, 18:55-56. Petitioner relies on Grupp ’483’s disclosure of TiO2 to satisfy this limitation. Pet. 36 (citing Ex. 1015, Grupp ’483, 18:65-67). After reviewing Petitioner’s arguments and evidence, we find that Petitioner has proven that Grupp ’483 anticipates claim 6. 5. Claim 8 Claim 8 recites the electrical junction of claim 6, “wherein the semiconductor comprises an n-type doped source or drain of a transistor.” Ex. 1001, 18:57-59. Petitioner relies on its showing for claim 2 for this limitation. Pet. 35. After reviewing Petitioner’s arguments and evidence, we find that Petitioner has proven that Grupp ’483 anticipates claim 8. 6. Claim 9 Claim 9 recites the electrical junction of claim 6, “wherein the contact metal is a metal or a stack of metals deposited on the interface layer.” Ex. 1001, 18:63-65. For this limitation, Petitioner quotes Grupp ’483’s disclosure of “[a]n interface layer formed in this fashion may be best suited for applications where a subsequent metal layer is deposited over the interface layer in a generally non-invasive fashion, for example using a thermally evaporated source.” Pet. 33 (quoting Ex. 1015, Grupp ’483, 11:66-12:3). After reviewing Petitioner’s arguments and evidence, we find that Petitioner has proven that Grupp ’483 anticipates claim 9. IPR2020-01205 Patent 9,461,167 B2 46 7. Claim 10 Claim 10 recites the electrical junction of claim 6, “wherein the oxide of a semiconductor comprises an oxide of silicon.” Ex. 1001, 18:66-67. For this limitation, Petitioner cites Grupp ’483’s disclosure of silicon dioxide as an oxide of silicon. Pet. 36-37 (citing Ex. 1015, Grupp ’483, 8:64-9:10). After reviewing Petitioner’s arguments and evidence, we find that Petitioner has proven that Grupp ’483 anticipates claim 10. 8. Claim 11 Claim 11 recites the electrical junction of claim 6, “wherein the oxide of the semiconductor of the interface layer is adjacent the semiconductor.” Ex. 1001, 19:1-3. For this limitation, Petitioner argues that Grupp ’483 discloses the silicon oxide and silicon dioxide as passivating materials and further discloses forming its passivating materials on the silicon surface, which indicates that the oxide is adjacent to the silicon surface. Pet. 37 (citing Ex. 1015, Grupp ’483, 8:64-9:10, 10:27-34; Ex. 1016, Schubert Decl. ¶¶ 159-160). After reviewing Petitioner’s arguments and evidence, we find that Petitioner has proven that Grupp ’483 anticipates claim 11. 9. Claim 12 Claim 12 recites the electrical junction of claim 2, “wherein the oxide of the semiconductor comprises an oxide of silicon.” Ex. 1001, 19:4-5. For this limitation, Petitioner relies on its analysis for claim 10. Pet. 38. After reviewing Petitioner’s arguments and evidence, we find that Petitioner has proven that Grupp ’483 anticipates claim 12. 10. Claim 14 Claim 14 recites the electrical junction of claim 12, “wherein the oxide of the semiconductor comprises an oxide of titanium.” Ex. 1001, 19:9-10. For this limitation, Petitioner relies on its analysis for claim 6. IPR2020-01205 Patent 9,461,167 B2 47 Pet. 38. After reviewing Petitioner’s arguments and evidence, we find that Petitioner has proven that Grupp ’483 anticipates claim 14. 11. Claim 15 Claim 15 recites the electrical junction of claim 14, “wherein the oxide of the semiconductor comprises an n-type doped source or drain of a transistor.” Ex. 1001, 19:11-13. For this limitation, Petitioner relies on its analysis for claim 3. Pet. 39. After reviewing Petitioner’s arguments and evidence, we find that Petitioner has proven that Grupp ’483 anticipates claim 15. 12. Claim 16 Claim 16 recites the electrical junction of claim 1, wherein: the semiconductor comprises silicon, the semiconductor comprises an n-type source or drain of a transistor, the oxide of the semiconductor is adjacent the semiconductor and comprises an oxide of silicon, the metal oxide of the interface layer comprises an oxide of titanium, the contact metal comprises titanium, and the metal oxide of the interface layer is adjacent the contact metal. Ex. 1001, 19:14-21. For these limitations, Petitioner relies on Grupp ’483’s disclosure of silicon (Pet. 39, citing Ex. 1015, Grupp ’483, 3:18-22; Ex. 1016, Schubert Decl. ¶ 177); its (Petitioner’s) analysis of claims 3, 6, 10, and 11 (id. at 39-40); Grupp ’483’s disclosure of titanium (id. at 40, citing Ex. 1015, Grupp ’483, 4:11-15); and the testimony of Dr. Schubert setting forth how Grupp ’483 discloses that the metal oxide is adjacent to the contact metal (id. at 40-42, citing Ex. 1016, Schubert Decl. ¶ 184). After reviewing Petitioner’s arguments and evidence, we find that Petitioner has proven that Grupp ’483 anticipates claim 16. IPR2020-01205 Patent 9,461,167 B2 48 D. Motion to Exclude Patent Owner seeks to exclude the following portion of the cross- examination testimony of Dr. Kuhn: page 114, line 10 through page 123, line 14 of her deposition transcript (Exs. 1042, 1043). Mot. Excl. 1, 5. Patent Owner argues that the testimony at issue concerns the scope of claims that recite “an oxide of titanium.” Id. at 1. According to Patent Owner, however, the oxide-of-titanium limitation was not substantively addressed in the Petition and Dr. Kuhn did not address it in her declaration. Id. Further, Patent Owner argues that it timely objected to the testimony at issue and thus the testimony should be excluded for exceeding the scope of Dr. Kuhn’s direct testimony. Id. at 1-2. Petitioner disagrees, arguing that Dr. Kuhn expressly opined on the “oxide of titanium” limitation. Opp. Mot. Excl. 1. Petitioner asserts: First, Dr. Kuhn opined that “nothing in the petition or Dr. Schubert’s declaration specifically address[ed] the written- description support of those dependent claims or an oxide of titanium.” Ex. 2070, Kuhn Decl. at ¶114. Second, Dr. Kuhn opined that “the metal oxide comprises an oxide of titanium” claims are “clearly narrower than ‘metal oxide.’” Id. Id. at 1-2 (emphasis omitted). Petitioner argues that it was entitled to explore Dr. Kuhn’s understanding of why she believes those claim limitations are “clearly narrower” and to challenge Dr. Kuhn’s assertion that they were not addressed in the petition or in Dr. Shubert’s declaration. Id. at 2. Patent Owner responds that Dr. Kuhn merely stated that the class of oxides of titanium is clearly narrower than the class of metal oxides and did not provide an opinion on that issue. Reply Mot. Excl. 1. Patent Owner IPR2020-01205 Patent 9,461,167 B2 49 further argues that statement did not open the door to Petitioner’s questioning regarding the titanium oxide genus. Id. at 2. We dismiss Patent Owner’s Motion to Exclude as moot in light of our determination regarding Petitioner’s written description challenge to Patent Owner’s benefit of its pre-2011 priority applications for claims 6, 8, 10, 11, and 14-16. In particular, Petitioner relies on the testimony at issue to support its belated challenge to the breadth of written description support in the pre-2011 priority applications for the oxide of titanium class recited by those claims. Reply Br. 7-12. Because we decided not to consider that belated challenge (see Section III.B.1.b), the Motion to Exclude is moot. E. Other Issues 1. 35 U.S.C. § 311(b) Patent Owner argues that “[t]here are no disputes in this IPR regarding whether the ‘prior art’ reference ([Patent Owner]’s own Grupp ’483 patent) teaches any of the claim limitations” and that “[f]or all intents and purposes, this IPR is a § 112 battle, just as if it were a PGR (for which the pre-AIA ’336 Patent is not eligible).” PO Resp. 50-51. Patent Owner further argues that “there is no priority dispute here regarding enablement” because “the petition does not assert that any subsequent developments after the filing of the earliest priority/benefit application (resulting in the ’423 Patent) has changed the enablement issue,” meaning that “either all of the specifications are enabling of the specific contact resistance ranges recited in the claims, or none of them are.” Pet. 50-51 (emphasis omitted). Patent Owner concludes that “[e]ntertaining the enablement challenge here would open the door for enablement challenges to a broad class of continuation patents in IPRs that Congress never intended.” Id. at 51. IPR2020-01205 Patent 9,461,167 B2 50 We remain unpersuaded by Patent Owner’s argument that an inter partes review may not address whether priority applications enable or have written description support for challenged claims. Although the issue of whether challenged claims are enabled by or have written description support in the specification of the challenged patent is beyond the scope of an inter partes review (35 U.S.C. § 311), whether a patent is entitled to the benefit of earlier filed applications under 35 U.S.C. §§ 119 or 120 is properly an issue to be addressed in an inter partes review. Indivior UK Ltd. v. Dr. Reddy's Lab'ys S.A., 18 F.4th 1323, 1326-1330 (Fed. Cir. 2021). . And the benefit of an earlier filed application requires written description and enablement support for the challenged claims in the earlier filed application. 35 U.S.C. § 120. 2. Appointments Clause Patent Owner argues that “[t]he AIA as written by Congress violates the Appointments Clause.” PO Resp. 53. The Supreme Court resolved this issue in United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021). 3. Alleged Structural Bias Patent Owner argues that “[t]he Board’s handling of this IPR is structurally biased in a way that has violated Acorn’s due-process rights” because the Director’s delegation of the authority to determine whether to institute and try this case “results in an improper structural bias because the Board has a strong financial incentive to institute trials.” PO Resp. 53-54. This argument was rejected by the Federal Circuit in Mobility Workx, LLC v. Unified Patents, LLC, 15 F.4th 1146 (Fed. Cir. 2021). IPR2020-01205 Patent 9,461,167 B2 51 4. Stipulation Patent Owner argues that “[t]he Board’s eleventh-hour invitation to the petitioner to revise its stipulation regarding parallel validity challenges in the district court . . . violated SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), due-process, and fundamental notions of fairness.” PO Resp. 56. Patent Owner contends that “Acorn invested its limited resources in these IPRs and the related litigation and chose which arguments to make based on the petition and the stipulation therein” but “after Acorn had made those significant investments, the Board allowed the petitioner to alter its case, indeed the Board invited and encouraged such revision.” Id. at 56-57 (emphasis omitted). This argument is unpersuasive. The stipulation did not change the contours of, or “curate,” the Petition; instead, in accordance with the precedential case of Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (December 1, 2020), Petitioner simply stipulated not to bring the same arguments in the District Court.7 IV. CONCLUSION As set forth in the following table, Petitioner has proven that claims 1-3, 6, 8-12, and 14-16 are unpatentable: Claims 35 U.S.C. § Reference Claims Shown Unpatentable Claims Not Shown Unpatentable 1-3, 6, 8-12, 14-16 102 Grupp ’483 1-3, 6, 8-12, 14-16 7 Sotera Wireless issued and was designated precedential (on December 1, 2020 and December 17, 2020, respectively) after the Petition and Petitioner’s Preliminary Reply were filed (on June 29, 2020 and November 23, 2020, respectively). Papers 2, 14. IPR2020-01205 Patent 9,461,167 B2 52 V. ORDER It is: ORDERED that claims 1-3, 6, 8-12, 14-16 of the ’167 patent have been shown, by a preponderance of the evidence, to be unpatentable;8 FURTHER ORDERED that Patent Owner’s Motion to Exclude is dismissed as moot; and FURTHER ORDERED that because this is a Final Written Decision, the parties to the proceeding seeking judicial review of the decision must comply with the notice and service requirements of 37 C.F.R. § 90.2. 8 Should Patent Owner wish to pursue amendment of the challenged claims in a reissue or reexamination proceeding subsequent to the issuance of this decision, we draw Patent Owner’s attention to the April 2019 Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg. 16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application or a request for reexamination of the challenged patent, we remind Patent Owner of its continuing obligation to notify the Board of any such related matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2). IPR2020-01205 Patent 9,461,167 B2 53 For PETITIONER: Yung-Hoon Ha Theodore Konstantakopoulos John Desmarais Cosmin Maier Christian Dorman DESMARAIS LLP yha@desmaraisllp.com tkonstantakopoulous@desmaraisllp.com jdesmarais@desmaraisllp.com cmaier@desmaraisllp.com cdorman@desmaraisllp.com For PATENT OWNER: Matthew Phillips Kevin Laurence Derek Meeker Rachel Slade LAURENCE & PHILLIPS IP LAW mphillips@lpiplaw.com klaurence@lpiplaw.com dmeeker@lpiplaw.com rslade@lpiplaw.com Tarek Fahmi ASCENDA LAW GROUP, PC tarek.fahmi@ascendalaw.com