Kaiser Aluminumv.Constellium Rolled Products Ravenswood, LLC

Patent Trial and Appeal Board

Nov 2, 2015

10853721 (P.T.A.B. Nov. 2, 2015)

Trials@uspto.gov Paper 64
571-272-7822 Entered: November 2, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

KAISER ALUMINUM,
Petitioner,

v.

CONSTELLIUM ROLLED PRODUCTS RAVENSWOOD, LLC,
Patent Owner.
____________

Case IPR2014-01002
Patent 7,229,509 B2
____________

Before MICHAEL P. TIERNEY, DONNA M. PRAISS, and
JO-ANNE M. KOKOSKI, Administrative Patent Judges.

KOKOSKI, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
Kaiser Aluminum (“Petitioner”) filed an Amended Petition (Paper 4,
“Pet.”) to institute an inter partes review of claim 10 of U.S. Patent No.
7,229,509 B2 (“the ’509 patent,” Ex. 1001). On December 29, 2014, we
instituted an inter partes review of claim 10 on three grounds of
unpatentability (Paper 11, “Dec. on Inst.”). Constellium Rolled Products
Ravenswood, LLC (“Patent Owner”) filed a Corrected Patent Owner
Response (Paper 36, “PO Resp.”). Petitioner filed a Reply (Paper 43,
“Reply”).
An oral hearing was held on September 30, 2015. A transcript of the
hearing is included in the record. Paper 63.
We have jurisdiction under 35 U.S.C. § 6(b). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has not shown by a
preponderance of the evidence that claim 10 of the ’509 patent is
unpatentable.
A. The ’509 Patent
The ’509 patent, titled “Al-Cu-Li-Mg-Ag-Mn-Zr Alloy for Use as
Structural Members Requiring High Strength and High Fracture
Toughness,” is directed to aluminum-lithium based alloy products displaying
a combination of high strength and high fracture toughness. Ex. 1001, 1:15–
22; Abstract. The Specification states that the claimed alloys are particularly
suitable for use in aircraft construction. Id. at 2:11–13. The claimed alloys
contain specified weight percentage amounts of copper, lithium, magnesium,
silver, manganese, and zirconium, and exhibit “an improved combination of
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strength and fracture toughness, over virtually any thickness range.” Id. at
2:27–36.
As originally issued, claim 10 depended from claim 1. In November
2011, Patent Owner disclaimed claims 1–9 and 11–16 of the ’509 patent.
Claim 10, written in independent form, reads as follows:
10. A rolled product comprising an aluminum alloy, having
improved strength and fracture toughness, said alloy
comprising the following alloying elements added thereto:
Cu: 2.5-4.0 wt. %
Li: 0.8-2.5 wt.%
Mg: 0.2-1 wt.%
Ag: 0.2-0.8 wt.%
Mn: 0.2-0.8 wt.% and
Zr: 0.05-0.3 wt.%;
and wherein the balance is Al and normal and/or inevitable
elements and impurities, with a thickness of at least about 3
inches, exhibiting in a solution heat-treated, quenched, stress-
relieved and artificially aged condition, at least one set of
properties selected from the group consisting of:
(a) UTS (L)>70 ksi (482.6 MPa) and KIC(L-T)>34
ksi√inch (37.4 MPa√m),
(b) TYS (L)>65 ksi (448.2 MPa) and KIC(L-T)>34
ksi√inch (37.4 MPa√m),
(c) UTS (LT)>70 ksi (482.6 MPa) and KIC(T-L)>27
ksi√inch (29.7 MPa√m),
(d) TYS (LT)>62 ksi (427.5 MPa) and KIC(T-L)>26
ksi√inch (28.6 MPa√m),
(e) UTS (ST)>70 ksi (482.6 MPa) and KIC(S-T)>24
ksi√inch (26.4 MPa√m) and
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(f) TYS (ST)>60 ksi (413.7 MPa) and KIC(S-T)>23
ksi√inch (25.3 MPa√m).
Pet. 17–18; Prelim. Resp. 3–4.
B. Prior Art
The pending grounds of unpatentability in this inter partes review are
based on the following prior art:
Balmuth, et al., U.S. Patent No. 5,234,662, issued August 10, 1993 (“’662
Balmuth,” Ex. 1005).
Pickens, et al., U.S. Patent No. 5,211,910, issued May 18, 1993 (“’910
Pickens,” Ex. 1012).
Balmuth and Cho, Fracture and Fatigue Crack Growth Resistance of
Recrystallized Al-Li Alloys, MATERIALS SCIENCE FORUM VOLS. 217–222,
1365–1370 (1996) (“Balmuth1,” Ex. 1010).
E. A. Starke, Jr., ed., NASA-UVa Light Aerospace Alloy and Structures
Technology Program: Aluminum-Based Materials for High Speed Aircraft,
January 1, 1993–June 30, 1993 Semi-Annual Report (1996) (“Starke
Reference,” Ex. 1011).
C. Pending Grounds of Unpatentability
This inter partes review involves the following grounds of
unpatentability:
Reference(s) Basis
Balmuth1 § 103
Starke Reference § 103
’662 Balmuth and ’910 Pickens § 103

Dec. on Inst. 15–16.
II. ANALYSIS
A. Claim Interpretation
We interpret claims of an unexpired patent using the “broadest
reasonable construction in light of the specification of the patent in which
[the claims] appear[].” 37 C.F.R. § 42.100(b). Under this standard, claim
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terms are given their ordinary and customary meaning in view of the
specification, as would be understood by one of ordinary skill in the art at
the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
(Fed. Cir. 2007).
For purposes of our Decision to Institute, we determined that the
terms in the challenged claims did not need to be construed expressly, and
we see no reason to modify that determination in light of the record
developed at trial.
B. References
1. Overview of Balmuth1
Balmuth1 describes testing conducted to evaluate four Al-Cu-Li-Mg-
Ag-Mn-Zr alloys with varying Cu/Li ratios. Balmuth1, Abstract and Table
1. According to Balmuth1, alloys with lower lithium concentrations provide
a combination of mechanical properties (such as strength, toughness, and
fatigue resistance) that are needed for use in aircraft applications. Id. at
Introduction. Balmuth1 states that magnesium and silver “were added to
optimize the strength-toughness properties,” and that “Ag additions to Al-
Cu-Li-Mg alloys result in high resistance to stress-corrosion.” Id. at
Materials. Balmuth1 further states that manganese reduces anisotropy and
increases the ease of recrystallization, and that zirconium controls grain
structure. Id. Table 1 of Balmuth1 is reproduced below:
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Table 1 sets forth the compositions of the alloys studied in Balmuth1. Id.
Balmuth1 measured the fatigue crack growth rates of 2.3 mm sheets
of each of the four alloys described in Table 1 in the L-T and T-L
orientations. Id. at Materials, Experimental. Balmuth1 states that “[f]racture
toughness values for each of the four alloys were much higher than for
conventional alloys” and that “these alloys could be readily formulated with
higher Cu or Li to achieve higher strength without a tradeoff for useful
toughness.” Id. at Discussion. Balmuth1 concludes that “[a] minimum
Li:Cu ratio of 0.2 may be required to attain optimum fatigue crack growth
resistance.” Id. at Conclusions.
2. Overview of the Starke Reference
The Starke Reference describes testing performed on a number of
alloy variants, including alloy composition 66937, with the following
composition:
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Ex. 1011, 58–59. Based on testing performed on 0.090” sheets, the Starke
Reference states that materials with recrystallized microstructures with low
Li content, such as 66937, “would be favored for higher fracture toughness
applications at a medium strength level.” Id. at 61. The Starke Reference
further states that 66937 (containing Zr and Mn) achieved the highest
fracture toughness. Id. at 62.
3. Overview of ’662 Balmuth
’662 Balmuth is directed to aluminum-based alloys. Ex. 1005,
Abstract. According to ’662 Balmuth, the described aluminum-based alloys
containing “specific and critical amounts of lithium, copper and preferably
manganese and optionally magnesium and minor amounts of grain refining
elements” provide low-density, high-strength alloys for use in aerospace and
aircraft components. Id. at 3:61–67. ’662 Balmuth identifies zirconium as a
grain refinement element that can be used in the disclosed compositions. Id.
at 4:18–19. ’662 Balmuth states that the amounts of each component are
“critical and essential” to provide the desired low-density, high-strength
properties. Id. at 4:56–60. ’662 Balmuth further states that the disclosed
combination of alloying elements, when processed into components such as
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a plate, “have good combinations of low density, strength, toughness, fatigue
resistance and corrosion resistance.” Id. at 4:61–66.
Example 2 in ’662 Balmuth sets forth the results of tests done to
determine the effect of aging and heat treating on the mechanical properties
of a plate having a thickness of 3.6 inches, compared to one having a
thickness of 1.5 inches. Id. at Example 2, 17:33–22:10. ’662 Balmuth states
that the testing of the 3.6-inch plate shows that “strength/toughness goals are
achievable” with the alloy tested. Id. at 21:13–15.
4. Overview of ’910 Pickens
’910 Pickens is directed to aluminum-based alloys containing copper,
lithium, magnesium, silver, and at least one other element. Ex. 1012,
1:6–10. The disclosed alloys possess “extremely desirable properties” such
as high artificially-aged strength, strong natural aging response, high
strength/ductility combinations, and low density, and “are particularly suited
for aerospace, aircraft, armor, and armored vehicle applications.” Id.
at 1:12–21. ’910 Pickens states that the use of Mg enhances nucleation and
increases strength at concentrations between 0.05 and 3 percent. Id.
at 12:12–30. ’910 Pickens further states that the use of Ag achieves highest
strengths at concentrations between 0.1 and 0.4 percent. Id. at 12:33–35.
C. Analysis of Grounds of Unpatentability
Petitioner asserts that claim 10 is unpatentable under 35 U.S.C. § 103
over (1) Balmuth1 (Pet. 19–26; Reply 1–10); (2) the Starke Reference
(Pet. 26–32; Reply 1–10); and (3) the combination of ’662 Balmuth and ’910
Pickens (Pet. 32–59; Reply 9–16). Petitioner explains how the cited
references allegedly disclose or suggest the claimed subject matter, and also
relies on the Declaration of Edward S. Balmuth (“Balmuth Declaration,”
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Ex. 1006), and the Declaration of Edgar A. Starke, Jr. (“Starke
Declaration,” Ex. 1008). Patent Owner disagrees with Petitioner’s assertions
and relies on the Declarations of Timothy Warner, Ph.D. (Exs. 2042
and 2050), the Declaration of Dr. Joseph R. Pickens (“Pickens Declaration,”
Ex. 2043), and the Declaration of Peter Reinhard Zobrist (Ex. 2044).
PO Resp. 8–45.
To prevail on its patentability challenge, Petitioner must establish
facts supporting its challenge by a preponderance of the evidence. 35 U.S.C.
§ 316(e); 37 C.F.R. § 42.1(d). A claim is unpatentable under 35 U.S.C.
§ 103 if the differences between the subject matter sought to be patented and
the prior art are such that the subject matter as a whole would have been
obvious to a person having ordinary skill in the art to which the subject
matter pertains. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). A
party that petitions the Board for a determination of obviousness must show
that “a skilled artisan would have been motivated to combine the teachings
of the prior art references to achieve the claimed invention, and that the
skilled artisan would have had a reasonable expectation of success in doing
so.” Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 994
(Fed. Cir. 2009) (citing Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361
(Fed. Cir. 2007)).
Petitioner contends that a person having ordinary skill in the art would
predict that an aluminum alloy with the claimed chemistry (such as the thin
sheets described in Balmuth1 and the Starke Reference) would inherently
have the claimed properties when formed as a plate with a thickness of at
least 3 inches. Pet. 26, 31. In support of this contention, Mr. Balmuth
testified that “[s]ince a ‘plate’ is just thicker ‘sheet,’ the ‘plate’ size section
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could be at whatever size desirable, including 3 inches thickness or greater,
and would inherently have the properties necessitated by the chemistry and
processing involved.” Ex. 1006 ¶ 13. Petitioner also relies on Dr. Starke’s
testimony that
[t]he mechanical properties of an aluminum alloy are
based on the chemistry and processing conditions. Because of
the improved strength and fracture toughness properties found
in the thin sheets tested in the Balmuth1 reference and the
Starke reference, one of ordinary skill in the art would expect
similar improvements in thicker plates using routine testing
equipment known to those of ordinary skill in the art. The
mechanical properties would be inherent in the thicker plate
because of the addition of Ag and Mn that are known to
improve strength and fracture toughness.
Ex. 1008 ¶ 32.
Petitioner further contends that a person having ordinary skill in the
art would have predicted “that a thick plate aluminum alloy as known in
the ’662 Balmuth patent would have improved properties upon the addition
of Ag/Mg as taught by the ’910 Pickens patent” and that “[t]hese improved
properties would be inherent and/or predictable.” Pet. 41. In support of this
contention, Petitioner relies on Mr. Balmuth’s testimony that “[i]t would
have been a matter of routine testing to make the alloy composition and test
for the properties, which would have been inherent in the chemistry and
processing steps involved.” Ex. 1006 ¶ 20.
Patent Owner argues that Petitioner has not established that the
claimed properties necessarily would be present in the alloys described in
Balmuth1 (PO Resp. 13–14), the Starke Reference (id. at 34–35), or by the
combination of ’662 Balmuth and ’910 Pickens (id. at 37–40, 42–44).
Patent Owner notes that “Mr. Balmuth testified in his deposition that
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although some of the claimed properties, such as toughness in the S-T
direction, can be measured in plate applications, ‘[y]ou don’t have the ability
to test it and you don’t have any interest in what its property is . . . [in sheet
applications].’” Id. at 14 (citing Ex. 2029, 50:16–51:5). Patent Owner states
that “Dr. Pickens testified that ‘plate is not simply thicker sheet’ and that
there are numerous complex differences between a sheet alloy and a product
with a ‘thickness of at least about 3 inches.’” Id. at 15 (citing Ex. 2043
¶ 11). Patent Owner further notes that “Mr. Balmuth admitted in his
deposition that his statement . . . that ‘plate is just thicker sheet’ was an
‘oversimplification.’” Id. at 9 (citing Ex. 2029 13:7–11). Patent Owner also
relies on Dr. Pickens’s testimony to rebut Dr. Starke’s contention that an
alloy showing improved properties in a thin plate with the addition of
Ag/Mg and Mn would have similar properties in a thick sheet having the
same chemistry:
Dr. Pickens explains that the result of an Ag and/or Mg
addition “would have been exceedingly difficult to predict” and
that the Ag and/or Mg additions may be particularly
problematic in thick plate applications. Dr. [Pickens] explains
that “. . . it is difficult to predict whether the addition [of] Ag
and Mg would be effective in the complex product form of
thick plate, especially where the inverse relationship of strength
and toughness is involved.”
Id. at 12–13 (citing Ex. 2043 ¶¶ 57–59). Patent Owner contends that, “as
confirmed by Dr. Pickens, the addition of Ag and/or Mg to any of the alloys
of ’662 Balmuth would have been expected to alter the properties of the
alloy in an unpredictable way.” Id. at 42.
Based on our review of the record, we find Patent Owner’s arguments
to be persuasive. In order to rely on inherency to establish the existence of a
missing claim limitation in an obviousness analysis, “the limitation at issue
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necessarily must be present, or the natural result of the combination of
elements explicitly disclosed by the prior art.” PAR Pharma., Inc. v. TWI
Pharmas., Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014). Neither
Mr. Balmuth’s nor Dr. Starke’s statements regarding the inherent properties
of a thick plate with the same chemistry as a thin sheet are supported by
sufficient objective evidence or analysis demonstrating that the claimed
properties would necessarily be present in the thick plate. Mr. Balmuth and
Dr. Starke simply state that such a thick plate would inherently have the
properties necessitated by the chemistry involved, without providing
sufficient and credible explanations as to why that would be the case. See
Ex. 1006 ¶ 13; Ex. 1008 ¶ 32. Mr. Balmuth, for example, states that “it is
generally understood that the strength and fracture toughness properties of a
plate are less than those of a sheet having similar chemistry,” but that “one
of ordinary skill in the art would predict improved properties for a plate
upon a showing of improved properties in a sheet having similar chemistry,”
and does not expound upon the reasons why a person skilled in the art would
understand that to mean that the thick plate would display the same
mechanical properties as the thin sheet. See Ex. 1006 ¶ 14. Based upon the
evidence presented, we find that the opinions of Mr. Balmuth and Dr. Starke
are not persuasive as they are not supported by the evidence of record. See
37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the
underlying facts or data on which the opinion is based is entitled to little or
no weight.”); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776
F.2d 281, 294 (Fed. Cir. 1985) (stating a lack of objective support for an
expert opinion “may render the testimony of little probative value in [a
patentability] determination”).
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Patent Owner, in contrast, provides reasoning as to why a person
having ordinary skill in the art would not have understood that a thick plate
would have similar properties to a thin sheet having the same chemistry.
PO Resp. 13–14, 34–35, 37–40, 42–44. For example, Patent Owner notes
that
since according to Mr. Balmuth you ‘don’t have the ability’ or
‘any interest’ in measuring toughness in the S-T direction in
sheet, Petitioner has not established that the strength and
toughness properties in sheet would necessarily be predictive of
the strength and toughness properties of plate, such as described
in Claim 10.
Id. at 14. Dr. Pickens also testified to the complexities involved in
developing thick plate aluminum-lithium alloys:
For example, quench sensitivity, stress-corrosion cracking
resistance, in plane anisotropy, through thickness heterogeneity,
and lower short transverse fracture toughness are a few factors
that make developing thick plate aluminum-lithium alloys very
complicated. Furthermore, lithium lowers the thermal
conductivity of aluminum which is problematic in several areas.
Heat is more difficult to extract during direct-chill casting
thereby exacerbating metallurgical segregation problems. Hot
rolling can break down segregation, such as heterogeneous
segregations at grain boundaries, so that it may be less harmful,
although there is a practical limit on how thick aluminum alloy
rolling ingot can be cast. The reduction ratio, i.e. scalped ingot
thickness to final product gauge, is an important real-world
processing variable when developing a thick plate aluminum
lithium alloy.
Ex. 2043 ¶ 11; see also PO Resp. 16–17 (discussing the “recognition in the
art of complex differences between sheet and thick plate”). Patent Owner
further notes that Dr. Pickens testified “that he would not have been
motivated to add Mn in the claimed amount to an Al-Cu-Li-Mg-Ag alloy
with a thickness of at least about 3 inches, or scale up a sheet alloy to the
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claimed thickness” because it was unclear, at the time of the ’509 patent, that
Mn would have had a beneficial impact on a thick plate Al-Cu-Li-Mg-Ag
alloy. PO Resp. 18–19 (citing Ex. 2043 ¶ 20). We find Patent Owner’s
arguments that a person having ordinary skill in the art would not have
expected a thick plate to have similar properties to a thin sheet having the
same chemistry to be persuasive. Id. at 8–17, 35–37; see Yorkey v. Diab,
601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding that Board has discretion to
give weight to one item of evidence over another “unless no reasonable trier
of fact could have done so.”).
Petitioner’s argument that “one of ordinary skill in the art would have
predicted that increasing the thickness” of the alloy compositions described
in the prior art “would have resulted in an alloy having the claimed
properties through routine experimentation” is similarly unpersuasive.
Pet. 29; see id. at 29–30, 38. Mr. Balmuth and Dr. Starke opine that one of
ordinary skill at the time of filing would have tried to manufacture a thick
plate with the claimed composition and properties because of a commercial
need in the aerospace industry. See, e.g., Ex. 1006 ¶ 14 (“It would have
been ‘obvious-to-try’ to manufacture plates having a thickness of 3 inches or
greater based on the success of the sheets taught in the Balmuth1 reference
in combination with the commercial need for such thick-section Li-
containing alloys in aerospace applications.”); Ex. 1008 ¶ 18 (“[T]here is a
commercial need in the aerospace industry for thick plate aluminum alloys
(200mm or more) that will develop the fatigue and fracture characteristics
equivalent to those of thin plates.”). However, as Patent Owner notes,
Dr. Pickens submits that the term “aerospace” is a “very broad
field, encompassing not only commercial aircraft, but high
speed military aircraft, rockets, cryogenic launch vehicles,
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orbiting manned space craft, satellites, helicopters.”
Dr. Pickens further submits that the specific combination of
properties sought would be application and service-requirement
dependent, with some applications requiring high strength and
others fatigue resistance, for example.
PO Resp. 23 (citing Ex. 2043 ¶ 40). Dr. Pickens testified further that to
successfully design a thick plate composition from a thin sheet, one of
ordinary skill in the art “would have had to explore a large test matrix of
composition variables and thermomechanical processing variants” and
performed “significant mechanical testing” to arrive at “the specific
combination of UTS, TYS, SCC resistance and toughness that was attained
in sheet or thin plate.” Ex. 2043 ¶ 18. Because “this can be a complicated,
costly, and an unpredictable endeavor,” Dr. Pickens stated that “[b]ased on
my more than 30 years of experience in industry, one should have a specific
service requirement in mind when attempting to design an alloy, given the
sheer number of different applications in the aerospace industry.” Id. Based
on the record before us, we find Dr. Pickens’s testimony to be persuasive.
Given the complexities involved in developing a thick plate
composition from a thin sheet, and the breadth of potential applications
within the aerospace industry, we determine that Mr. Balmuth and
Dr. Starke fail to provide sufficient reasoning as to why one of ordinary skill
in the art would have attempted to manufacture thick plates having the
claimed properties from the thin sheets described in the prior art. See, e.g.,
InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1348–49 (Fed.
Cir. 2014) (holding expert testimony to be impermissible hindsight for
failing to explain what reason or motivation one of ordinary skill in the art at
the time of the invention would have had to place the prior art together).
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In an obviousness determination, we must avoid analyzing the prior
art through the prism of hindsight. Instead, we must “cast the mind back to
the time the invention was made” and “occupy the mind of one skilled in the
art who is presented only with the references, and who is normally guided by
the then-accepted wisdom in the art.” W.L. Gore & Assoc., Inc. v. Garlock,
721 F.2d 1540, 1553 (Fed. Cir. 1983). Here, Petitioner attempts to imbue
one of ordinary skill in the art with knowledge of the claimed invention,
when there is insufficient evidence of record to convey or suggest that
knowledge. Rather, Petitioner’s arguments that a person having ordinary
skill in the art would have only needed to use routine experimentation to
manufacture a thick plate alloy having the claimed properties appears to be
premised on Petitioner’s knowledge of the ’509 patent itself. See, e.g.,
Pet. 20 (“In this case, the ’509 patent confirmed that the chemistry in the
Balmuth1 reference relating to sheet material could be used for plate
products without adjusting the chemistry to arrive at the beneficial strength
and toughness properties using merely routine testing procedures.”).
Petitioner’s contentions that it would have been obvious to try to
manufacture thick plates having the claimed properties and that “one of
ordinary skill in the art had a ‘good reason to pursue the known options
within his . . . technical grasp’” to do so similarly are insufficient. See
Pet. 22; id. at 21–24. The Federal Circuit has held that “a finite number of
identified, predictable solutions” may support an inference of obviousness,
but “[t]o the extent an art is unpredictable, as the chemical arts often are,
KSR’s focus on these ‘identified, predictable solutions’ may present a
difficult hurdle because potential solutions are less likely to be genuinely
predictable.” Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353, 1359
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(Fed. Cir. 2008) (citing KSR, 550 U.S. at 421 (“When there is a design need
or market pressure to solve a problem and there are a finite number of
identified, predictable solutions, a person of ordinary skill has a good reason
to pursue known options within this or her technical grasp.”)). As set forth
above, we credit Dr. Pickens’s testimony that designing a thick plate alloy
product having the claimed properties from a thin sheet alloy product would
be costly and unpredictable. Accordingly, Petitioner has not shown
sufficiently that a person having ordinary skill in the art would have
considered it obvious to try to manufacture a thick plate composition with
the properties recited in claim 10 of the ’509 patent.
On the record before us, we find that Petitioner has not shown that
Balmuth1, the Starke Reference, or the combination of ’662 Balmuth and
’910 Pickens renders the challenged claim unpatentable. Therefore, we
conclude Petitioner has not demonstrated by a preponderance of the
evidence that claim 10 of the ’509 patent would have been obvious over
Balmuth1, the Starke Reference, or the combination of ’662 Balmuth
and ’910 Pickens.
D. Objective Indicia of Nonobviousness
Patent Owner contends that Petitioner fails to meet its burden of
showing unpatentability because objective indicia of nonobviousness
indicate that the claimed subject matter would not have been obvious.
PO Resp. 45–52. As discussed above, we find that Petitioner has not
demonstrated that claim 10 would have been obvious over Balmuth1, the
Starke Reference, or the combination of ’662 Balmuth and ’910 Pickens.
Thus, we need not address Patent Owner’s evidence regarding secondary
considerations of nonobviousness.
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III. CONCLUSION
For the reasons given, we are not persuaded that Petitioner has shown
by a preponderance of the evidence that claim 10 of the ’509 patent would
have been obvious over Balmuth1, the Starke Reference, or the combined
teachings of ’662 Balmuth and ’910 Pickens.

IV. ORDER
In consideration of the foregoing, it is
ORDERED that Petitioner has not shown by a preponderance of the
evidence that claim 10 of the ’509 patent is unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
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.

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PETITIONER:

Jennifer P. Yancy
YANCY IP LAW, PLLC
jyancy@yancyip.com

Nicholas S. Whitelaw
DIEDRICKS & WHITELAW, PLC
mail@dwpatentlaw.com
nwhitelaw@dwpatentlaw.com

PATENT OWNER:

Susan E. Shaw McBee
David Vanik
Thomas E. Lynch
MILES & STOCKBRIDGE P.C.
smcbee@milesstockbridge.com
dvanik@milesstockbridge.com
tlynch@milesstockbridge.com

Michael R. Houston
FOLEY & LARDNER LLP
mhouston@foley.com