Paper 6 Tel: Entered: August 14, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

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1 Paper 6 Tel: Entered: August 14, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD E INK CORPORATION, Petitioner, v. RESEARCH FRONTIERS INCORPORATED, Patent Owner. Case IPR Before TONI R. SCHEINER, DEBRA K. STEPHENS, and TRENTON WARD, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 37 C.F.R

2 E Ink Corporation ( Petitioner ) filed a Petition (Paper 1, Pet. ) to institute an inter partes review of claims 1 12, 14 20, 22 27, and 29 of U.S. Patent No. 6,606,185 (Ex. 1001, the 185 patent ) pursuant to 35 U.S.C Research Frontiers Incorporated ( Patent Owner ) filed a Preliminary Response (Paper 5, Prelim. Resp. ) to the Petition. We have jurisdiction under 35 U.S.C. 314 with respect to claims 1 12, 14 20, 22 27, and 29 for which Petitioner seeks an inter partes review. For the reasons that follow, the Board declines to institute an inter partes review. I. BACKGROUND The standard for instituting an inter partes review is set forth in 35 U.S.C. 314(a): THRESHOLD. The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. Petitioner challenges claims 1 4, 7 10, 12, 14 16, 19, 20, 22, 23, 26, 27, and 29 as anticipated under 35 U.S.C. 102(b) and claims 1 12, 14 20, 22 27, and 29 as unpatentable under 35 U.S.C. 103(a). Pet. 1; 10. For the reasons described below, we determine that the present record fails to show a reasonable likelihood Petitioner will prevail in showing the unpatentability of any claim; thus, we deny the Petition. 2

3 A. The 185 Patent (Ex. 1001) The 185 patent, titled SPD Films and Light Valves Comprising Liquid Suspensions of Heat-Reflective Particles of Mixed Metal Oxides and Methods of Making Such Particles, describes a device comprising a liquid suspension of anisometrically shaped particles of a heat-reflective mixed metal oxides ( MMO ). Ex. 1001, Abstract; col. 1, ll According to the 185 patent, an electro-optical device includes a cell formed of opposed cell walls, a light modulating unit, and opposed electrodes operatively associated with the cell walls. Id. at Abstract. The light modulating unit comprises a suspension containing anisometrically shaped particles formed of a heat-reflective mixed metal oxide suspended in a liquid suspending medium disposed between the cell walls. Id. at Abstract; col. 3, ll The anisometrically shaped heat-reflective particles have an average length in the range between about 1 micron and 50 nanometers, preferably between about 200 nanometers and 50 nanometers, and more preferably, between about 75 and 180 nanometers. Id. at Abstract; col. 3, ll B. Illustrative Claim Claim 1 of the 185 patent is illustrative of the claims at issue: 1. An electro-optical device comprising a cell formed of opposed cell walls, a light modulating unit comprising a suspension containing anisometrically shaped particles comprising a heat-reflective mixed metal oxide suspended in a liquid suspending medium between said cell walls, and opposed electrodes operatively associated with the cell walls for applying an electrical field across the suspension, wherein said particles have an average length in a range between about 1 micron and about 50 nanometers. 3

4 C. The Prior Art Petitioner relies on the following prior art: Saxe US 5,650,872 Jul. 22, 1997 Ex Tada US 4,919,521 Apr. 24, 1990 Ex Morita US 6,400,492 B1 Jun. 4, 2002 Ex Sakoske U S 6,221,147 B1 Apr. 24, 2001 Ex Pigment Handbook (Peter A. Lewis ed., 2nd ed.,1988) (Ex. 1008) ( Pigment Handbook ). Infrared Black 411 Technical Data (The Shepherd Color Company 1999) and Comparison of Color, Color Strength, and Heat Buildup of Shepherd Pigments PowerPoint presentation to Geon (February 2, 2000) (collectively, Ex. 1009) ( Shepherd s Infrared Black 411 ). 1 1 Both the presentation (Comparison of Color, Color Strength, and Heat Buildup of Shepherd Pigments) and technical data sheet (Infrared Black 411) were submitted as one Exhibit (Ex. 1009). Combining the two references into one Exhibit does not impact the findings, conclusions, or analysis in this Decision. Accordingly, we consider this harmless error. 4

5 D. The Asserted Grounds Petitioner challenges claims 1 12, 14 20, 22 27, and 29 of the 185 patent under 35 U.S.C. 102 and 103 on the following grounds: Reference(s) Claims Challenged Grounds Saxe 1 4, 7 10, 12, (b) 16, 19, 20, 22, 23, 26, 27, and 29 Saxe and Pigment Handbook 1 4, 7 10, 12, , 19, 20, 22, 23, 26, 27, and 29 Saxe and Sakoske 1 3, 5 10, 12, 14, , 17 20, 22, 24 27, and 29 Saxe and Shepherd s Infrared Black , 7 10, 12, Documents 16, 19, 20, 22, 23, 26, 27, and 29 Tada and Saxe 1 3, 7 12, 15, 19, , 22, 26, and 27 Tada, Saxe, and Pigment Handbook 1 4, 7 12, 14 16, , 20, 22, 23, 26, 27, and 29 Tada, Saxe, and Sakoske 1 3, 5 12, 14, 15, 17 20, 22, 24 27, 103 Tada, Saxe, and Shepherd s Infrared Black 411 Documents and , 7 12, 14 16, 19, 20, 22, 23, 26, 27, and Morita (b) Morita

6 E. Claim Interpretation Consistent with the statute and legislative history of the Leahy-Smith America Invents Act, Pub. L. No , 125 Stat. 284 (2011), the Board interprets claims using the broadest reasonable construction in light of the specification of the patent in which [they] appear[]. 37 C.F.R (b); see also Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). There is a heavy presumption a claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). However, a claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history. Id. Although an inventor is indeed free to define the specific terms used to describe his or her invention, this must be done with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Also, we must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) ( [L]imitations are not to be read into the claims from the specification. ) For purposes of this decision and based on the record before us, we construe certain claim limitations as follows. 1. light modulating unit (claims 1 12, 14, 22 27, and 29) Petitioner proposes that light modulating unit should be interpreted as a contained suspension of particles that, in the presence of an electric field, controls light transmission via rotational particle alignment, or changes 6

7 its appearance via particle migration. Pet. 19. Petitioner contends the 185 patent supports this interpretation. Id. Specifically, Petitioner acknowledges the term light modulating unit is not defined explicitly in the 185 patent, but argues the 185 patent does disclose that a light modulating element is the activatable material of an suspended particle device ( SPD ) that operates to function through rotational particle alignment. Id. at Therefore, Petitioner argues as light modulating element is the only light modulation described in the patent, the definition of light modulating unit must encompass this modulation. Id. Furthermore, Petitioner contends the definition must encompass both electrophoretic displays ( EPDs ) and SPDs, due to the Patent Owner s infringement allegations, although EPDs are not SPD light valves. Id. at limitation. Patent Owner has not proffered an interpretation of this claim The 185 patent describes a light modulating element as either a liquid suspension of particles or a plastic film in which droplets of a liquid suspension of particles or a plastic film in which droplets of a liquid suspension of particles are distributed. Ex. 1001, col. 1, ll The 185 patent further describes a light modulating unit as comprising a suspension containing anisometrically shaped particles of a heat-reflective mixed metal oxide suspended in a liquid suspending medium or a film in an SPD light valve. Ex. 1001, Abstract; col. 3, ll ; col. 4, ll Upon review of the record before us, and considering the broadest, reasonable interpretation in light of the specification, we construe light 7

8 modulating unit as a unit which modulates light using a suspension of particles, including but not limited to, SPDs and EPDs. 2. light valve and SPD light valve (claims 2 11, 22 27, and 29) Petitioner contends the terms light valve and SPD light valve are synonymous. Pet. 24. Petitioner urges us to construe both terms to mean a cell, containing a light modulating unit, formed of two walls that are spaced apart, at least one wall being transparent, the walls having electrodes thereon and further points to the 185 patent specification as supporting this interpretation. Pet Patent Owner did not proffer a specific definition in its Preliminary Response. The 185 patent, however, explicitly defines light valve: As used herein, the term light valve is defined as a cell formed of two walls that are spaced apart by a small distance, at least one wall being transparent, the walls having electrodes thereon usually in the form of transparent conductive coatings. Ex. 1001, col. 1, ll Thus, based on the explicit definition set forth in the specification, we construe light valve to mean a cell formed of two walls that are spaced apart by a small distance, at least one wall being transparent, the walls having electrodes thereon usually in the form of transparent conductive coatings. We further determine an SPD light valve is not synonymous with light valve, but instead is a subset of light valves, namely suspended particle device light valves. 3. anisometrically shaped (claims 1 12 and 14 20) Petitioner urges us to construe anisometrically shaped as anisometric is defined in the 185 patent specification. Pet. 25 (citing 8

9 Ex. 1001, col. 3, ll. 2 5). Patent Owner also points to the definition of anisometric in the specification: hav[ing] at least one dimension larger than another dimension. Prelim. Resp. 19; Ex. 1001, col. 3, ll In light of the explicit definition of anisometric in the specification, we construe anisometrically shaped to mean shaped such that at least one dimension of a particle is larger than another dimension. Id. at mixed metal oxide (claims 1 12, 14 20, 22 27, and 29) Petitioner argues mixed metal oxide is defined in the 185 patent specification and thus, should be construed as a compound consisting of two or more metals and oxygen. Pet. 25 (citing Ex. 1001, col. 3, ll ). Patent Owner does not present a proposed interpretation for the term. The 185 patent states: However, particles comprising two or more metals (mixed metals) and particles comprising mixed metals and oxygen (mixed metal oxides)... have not been previously proposed for use in liquid light valve suspensions, in SPD films, or in light valves. Ex. 1001, col. 3, ll In light of the record before us, using the broadest reasonable interpretation in light of the specification, we construe mixed metal oxide as a compound comprising two or more metals and oxygen. 5. heat-reflective (claims 1 12, 14 20, 22 27, and 29) Peitioner argues the term heat-reflective is indefinite under 35 U.S.C. 112 because the term does not indicate how much heat a material must reflect to fall within the scope of the claim, nor does the specification of the 185 patent provide any indication. Pet ; Ex

10 91. Petitioner contends that, because the Board is not able to declare existing claims indefinite, the Board should interpret heat-reflective as capable of reflecting heat, especially near-infrared radiation, pointing to specific passages in the 185 patent discussing the particles are capable of reflecting heat, especially near-infrared radiation. Pet Patent Owner does not present a proposed interpretation for the term. The specification does not explicitly define heat reflective. Therefore, based on the record before us, and considering the broadest, reasonable construction in light of the specification (see e.g. Ex. 1001, 1:9 14), we construe heat-reflective to mean capable of reflecting heat. 6. light valve suspension and liquid light valve suspension (claims 2, 4 11, 15 20, 22 27, and 29) Petitioner contends both light valve suspension and liquid light valve suspension should be construed to mean one or more non-aqueous, electrically resistive liquids in which a plurality of particles are dispersed that, in the presence of an electric field, control light transmission via rotational particle alignment, or change their appearance via particle migration. Pet. 27. Petitioner asserts the specification states the term liquid light valve suspension is defined to mean a liquid suspending medium in which a plurality of small particles are dispersed. Id. Patent Owner does not proffer an interpretation for the terms. The 185 patent sometimes refers to a liquid light valve suspension and sometimes simply a light valve suspension. Ex. 1001, col. 1, ll The 185 patent further discloses [t]he term liquid light valve suspension means... a liquid suspending medium in which a plurality of small particles are dispersed. Ex. 1001, col. 2, ll

11 The 185 patent explicitly defines liquid light valve suspension. Accordingly, in light of the explicit definition and considering the broadest, reasonable interpretation in light of the specification, we construe light valve suspension as a suspending medium in which a plurality of small particles are dispersed and liquid light valve suspension as a liquid suspending medium in which a plurality of small particles are dispersed. II. DISCUSSION A. Claims 1 4, 7 10, 12, 14 16, 19, 20, 22, 23, 26, 27, and 29: Asserted Ground Based on Saxe Petitioner contends claims 1 4, 7 10, 12, 14 16, 19, 20, 22, 23, 26, 27, and 29 are anticipated by Saxe under 35 U.S.C. 102(b). Pet To support its assertions, Petitioner relies on the Declaration of Anne Chiang, Ph.D. (Ex. 1049, the Chiang Declaration ). 1. Saxe Saxe describes an electro-optical device, such as a light valve or electrophoretic display, comprising a cell formed of opposed cell walls, a light-modulating unit, and opposed electrodes means operatively associated with the cell walls. Ex. 1003, Abstract; col. 2, ll The light modulating unit is described as comprising a suspension containing anisometric particles suspended in a liquid suspending medium between the cell walls. Id. at Abstract; col. 2, ll The opposed electrodes are used to apply an electrical field across that suspension. Id. at Abstract; col. 2, ll The anisometric particles have an average particle size of 0.2 microns or less, preferably about 0.1 micron or less. Id. at col. 2, ll ; see id. at col. 3, ll Saxe further describes the anisometric particles 11

12 are prepared by the Evaporative Dispersion Process (EDP). Id. at col. 3, ll i. Claims 1, 15, and Analysis Claim 1 of the 185 patent recites a light modulating unit comprising a suspension containing anisometrically shaped particles comprising a heatreflective mixed metal oxide... wherein said particles have an average length in a range between about 1 micron and about 50 nanometers. Claim 15 recites a plurality of anisometrically shaped particles comprising a heatreflective mixed metal oxide suspended therein, wherein said particles have an average length of between about nanometers and claim 22 recites a liquid light valve suspension... comprising a plurality of heat-reflective mixed metal oxide particles suspended in a liquid suspending medium, wherein said particles have an average length of between about nanometers. According to Petitioner, Saxe discloses every recited limitation of the disputed claims. Pet particles have an average length in a range Petitioner further identifies Saxe s description of anisometric particles having an average particle size of about 0.2 microns or less, preferably about 0.1 microns or less as disclosing the claimed particles hav[ing] an average length in a range between about 1 micron and about 50 nanometers (claim 1) and hav[ing] an average length of between about nanometers (claims 15 and 22) because the preferred embodiments of Saxe overlap the range claimed. Pet

13 Patent Owner argues Saxe does not disclose the heat-reflective mixed metal oxide particles have a size in the claimed nm range (claim 1) or nm range (claim 15 and 22). Prelim. Resp According to Patent Owner, Saxe fails to recognize the importance of the 50nm lower limit and instead, permits particles sizes as low as 1nm much smaller than the recited lower limit of 50nm. Id. at 9. Further, Patent Owner argues the mere overlap of the range recited with that disclosed in Saxe does not create anticipation. Id. at 10. We are persuaded by Patent Owner s arguments that Saxe does not disclose particles having an average length in a range between about 1 micron and about 50 nanometers as recited in claim 1 or an average length of between about nanometers, as recited in claims 15 and 22. Specifically, although the particle size range disclosed in the 185 patent overlaps with the disclosure in Saxe, Saxe does not discuss a lower limit for the particle size. Petitioner s Declarant, Dr. Chiang, states the 185 patent does not explain that the smaller average length ranges provides any unexpected results. Ex The 185 patent discloses, however, if the particles have too small a length, a... problem arises. More particularly, the 185 patent discloses that a suspension of very small length particles requires a relatively great amount of voltage to orient the particles, whereas longer particles require less voltage because of their greater torque. Ex. 1001, col. 5, ll Thus, we determine the 185 patent indicates a lower particle size limit is an important aspect of the claimed invention. 2 1 micron = 1000 nm 13

14 Furthermore, given the difference between the claimed range and the range in the Saxe (which is larger and has no lower limit), we conclude that Saxe does not describe the claimed range with sufficient specificity to anticipate this limitation of the claim. See Atofina v. Great Lakes Chemical Corp. 441 F.3d 991, 999 (Fed. Cir. 2006). Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that independent claims 1, 15, and 22 are anticipated by Saxe under 35 U.S.C. 102(b). ii. Claims 2 4, 16, and 23 As set forth above, in Section (i) above, we have not been persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertion that independent claims 1, 15, and 22 is anticipated by Saxe. With respect to the dependent claims 2 4, 7 10, 12, 14 16, 19, 20, 23, 26, 27, and 29, Petitioner has not proffered additional arguments of evidence in its discussion of these dependent claims, to persuade us Saxe discloses the invention as recited in claims 1, 15, and 22. Accordingly, on the record before us, we determine Petitioner has not identified where Saxe discloses the invention as recited in dependent claims 1 4, 7 10, 12, 14 16, 19, 20, 22, 23, 26, 27, and 29. B. Claims 1 4, 7 10, 12, 14 16, 19, 20, 22, 23, 26, 27, and 29: Asserted Ground Based on Saxe and Pigment Handbook Claims 1 3, 5 10, 12, 14, 15, 17 20, 22, 24 27, and 29: Asserted Ground Based on Saxe and Sakoske Claims 1 4, 7 10, 12, 14 16, 19, 20, 22, 23, 26, 27, and 29: Asserted Ground Based on Saxe and Shepherd s Infrared Black 411 Documents 14

15 Petitioner contends claims 1 4, 7 10, 12, 14 16, 19, 20, 22, 23, 26, 27, and 29 are unpatentable under 35 U.S.C. 103 over Saxe and Pigment Handbook. Pet Petitioner does not specifically argue claims 1 3, 7 10, 12, 15, 19, 20, 22, 26, and 27, but instead focuses on claims 4, 14, 16, 23, and 29. Id. Petitioner contends claims 1 3, 5 10, 12, 14, 15, 17 20, 22, 24 27, and 29 are unpatentable under 35 U.S.C. 103 over Saxe and Sakoske, but only specifically argues Sakoske discloses the limitations of claims 5 and 6. Id. at Petitioner contends claims 1 4, 7 10, 12, 14 16, 19, 20, 22, 23, 26, 27, and 29 are unpatentable under 35 U.S.C. 103 over Saxe and Shepherd s Infrared Black 411 Documents, but only specifically argues Shepherd s Infrared Black 411 discloses the limitations of claims 4, 14, 16, 23, and 29. Id. at To support its assertions, Petitioner relies on Saxe as teaching all the features of the independent claims from which the argued claims depend. Id. at However, Petitioner has not provided any additional argument or evidence as to why the cited references, taken alone or in combination, render the independent claims obvious. Petitioner argues the specific limitations of several dependent claims, contending the combination of Saxe and one of Pigment Handbook, Sakoske, and Shepherd s Infrared Black 411 teaches claims 2 10, 12, 14, 15 20, 22 27, and 29, respectively. Id. at As we set forth above in our discussion of claims 1, 15, and 22 in Section A(i) above, we are not persuaded Petitioner has demonstrated a reasonable likelihood of prevailing on its assertion that Saxe describes the invention as recited in independent 15

16 claims 1, 15, and 22. It follows, we are not persuaded Petitioner has demonstrated claims 1 12, 14 20, 22 27, and 29 are obvious over Saxe in combination with one of the Pigment Handbook, Sakoske, and Shepherd s Infrared Black 411 Documents. Accordingly, based on the record before us, we are not persuaded Petitioner has demonstrated a reasonable likelihood of prevailing on its assertion claims 1 4, 7 10, 12, 14 16, 19, 20, 22, 23, 26, 27, and 29 are unpatentable as obvious over the combination of Saxe and Pigment Handbook; claims 1 3, 5 10, 12, 14, 15, 17 20, 22, 24 27, and 29 are unpatentable as obvious over the combination of Saxe and Sakoske; and claims 1 4, 7 10, 12, 14 16, 19, 20, 22, 23, 26, 27, and 29 are unpatentable as obvious over the combination of Saxe and Shepherd s Infrared Black 411 Documents. E. Claims 1 3, 7 12, 15, 19, 20, 22, 26, and 27: Asserted Ground Based on Tada and Saxe Petitioner contends claims 1 3, 7 12, 15, 19, 20, 22, 26, and 27 are unpatentable under 35 U.S.C. 103 over Tada and Saxe. Id. at To support its assertions, Petitioner relies on the Chiang Declaration. 1. Tada (Ex. 1004) Tada teaches an electromagnetic device, particularly one of a large area, applicable to a cell with controllability of transmission (smart window, permeation-type indication element). Ex. 1004, col. 1, ll The electromagnetic device comprises a solid matrix layer within which microcapsules containing suspension anisotropic particles are dispersed. Id. at Abstract. An electric or magnetic field is applied to the anisometric particles 16

17 to control the transmittance or reflection of solar radiation. Id. at col. 1, ll Analysis Petitioner contends the combination of Tada and Saxe discloses each limitation of claims 1 3, 7 12, 15, 19, 20, 22, 26, and 27. Pet Specifically, Petitioner argues Tada teaches the use of SPD light valves in smart windows which require particles having strong reflecting ability in the near infrared region of the spectrum. Id. at 44. Tada describes using tungsten bronze, which has the desired characteristics (including being heatreflective), and thus, Petitioner asserts Tada teaches particles comprising heat-reflective mixed metal oxide. Id. at Patent Owner contends the disclosure in Tada of a mixed metal oxide is limited to a coating onto an inner core much larger than the recited particle size. Prelim. Resp. 12. Specifically, Petitioner argues Tada only discusses a mixed metal oxide in one example, Example 4, which describes use of a tungsten bronze coating on a particle at least three-fold larger than the claimed upper size range. Id. at 13. Initially, as a matter of claim construction, we note the claim does not preclude a particle with the heat-reflective mixed metal oxide from being a coating. The claim language recites anisometrically shaped particles comprising a heat-reflective mixed metal oxide. Even adopting Patent Owner s construction, however, based upon the record before us, we are persuaded by Petitioner s arguments. Tada teaches anisotropic particles employable in the its invention include anisotropic particles having strong light-absorbing and light-reflecting ability for visible and near infrared 17

18 region such as... organometal such as... tungsten bronze. Ex. 1004, col. 4, ll. 3 4; Therefore, we are persuaded, based on the record, Tada teaches particles comprising a heat-reflective mixed metal oxide. Next, Petitioner relies on both Tada and Saxe as disclosing particles with average lengths within the ranges recited. Pet , 48. With respect to Saxe, Petitioner points to the discussion that ultrafine light valve particles are desirable due to their faster decay times and because larger particles promote agglomeration. Id. at Thus, Petitioner contends an ordinarily skilled artisan would have used the ultrafine particles taught by Saxe in the system of Tada to decrease agglomeration and achieve faster decay time. Id. at 46. As discussed above, we have determined Saxe does not disclose the recited particle size range. Petitioner further sets forth Tada s disclosure that the particles range in size from about nm and about µm teaches the recited wherein said particles have an average length in a range between about 1 micron and about 50 nanometers. Id. at 48; Ex. 1004, col. 5, ll Patent Owner argues the recited particle range applies only to anisotropic particles made of inorganic material or organometal. Prelim. Resp. 14. Patent Owner further contends the disclosed range is useless for avoiding light diffusion at sizes over about 1000 nm or for avoiding unacceptable voltage requirements below about 50 nm. Id. at 15. Therefore, according to Patent Owner, the described 20-30,000 nm range does not render obvious the recited and narrower nm range or narrower nm. Id. 18

19 The range recited in claim 1 of the 185 patent, 50 nm to 1,000 nm range (claim 1) and nm range (claims 15 and 22) does not entirely overlap that disclosed in Tada, which teaches a much larger range of particle sizes. Specifically, Tada discloses a nm and 20,000-30,000 nm range. Ex. 1004, col. 5, ll We are persuaded by Patent Owner s arguments. Therefore, based on the record before us, we are not persuaded Tada discloses the recited range. Moreover, Petitioner has not sufficiently explained why an ordinarily skilled artisan would limit the particle size to the ranges recited in claims 1, 15, and 22. Petitioner states a person of ordinary skill in the art would have used Saxe teaching of ultrafine light valve particles because this size particle results in faster decay time in Tada. Pet. 46. Petitioner, however, does not explain why a person of ordinary skill in the art would have found it obvious to require the particle to be above 50 nanometers in size. Therefore, we are not satisfied Petitioner has articulated sufficient reasoning with a rational underpinning as to why an ordinarily skilled artisan would have combined the teachings of Tada and Saxe to achieve the invention as recited in claims 1, 15, and 22. As Petitioner has not proffered any additional arguments or evidence in the discussion of the disputed dependent claims to persuade us Saxe or Tada, taken alone or in combination, teaches the invention as recited in these dependent claims. Accordingly, we determine Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion claims 1 3, 7 12, 15, 19, 20, 22, 26, and 27 are unpatentable as obvious over the combination of Tada and Saxe. 19

20 C. Claims 1 4, 7 12, 14 16, 19, 20, 22, 23, 26, 27, and 29: Asserted Ground Based on Tada, Saxe, and Pigment Handbook Claims 1 3, 5 12, 14, 15, 17 20, 22, 24 27, and 29: Asserted Ground Based on Tada, Saxe, and Sakoske Claims 1 4, 7 12, 14 16, 19, 20, 22, 23, 26, 27, and 29: Asserted Ground Based on Tada, Saxe, and Shepherd s Infrared Black 411 Documents Petitioner contends claims 1 4, 7 12, 14 16, 19, 20, 22, 23, 26, 27, and 29 are unpatentable under 35 U.S.C. 103 over Tada, Saxe, and Pigment Handbook, only specifically arguing Pigment Handbook teaches the limitations recited in claims 4, 14, 16, 23, and 29. Pet Petitioner next asserts claims 1 3, 5 12, 14, 15, 17 20, 22, 24 27, and 29 are unpatentable under 35 U.S.C. 103 over Tada, Saxe, and Sakoske, only specifically arguing Sakoske teaches the limitations recited in claims 5, 6, 14, 17, 18, 24, 25, and 29. Id. at Petitioner contends claims 1 4, 7 12, 14 16, 19, 20, 22, 23, 26, 27, and 29 are unpatentable under 35 U.S.C. 103 over Tada, Saxe, and Shepherd s Infrared Black 411 Documents, but only specifically argues Shepherd s Infrared Black 411 Documents teach the limitations recited in claims 4, 14, 16, 23, and 29. Id. at To support its assertions, Petitioner relies on Saxe as teaching all the features of the independent claims from which the argued claims depend. Id. at Petitioner argues the specific limitations of several dependent claims contending the Pigment Handbook, Sakoske, or Shepherd s Infrared Black 411 Documents teaches the recited limitation of claims 2 10, 12, 14, 15 20, 22 27, and 29, respectively. Id. at

21 As we set forth above, in light of the current record, we are not persuaded Petitioner has demonstrated a reasonable likelihood of prevailing on its assertion that Saxe describes the invention as recited in independent claims 1, 15, and 22. Petitioner has not provided any additional argument or evidence as to why the cited references, taken alone or in combination, render the independent claims obvious. Therefore, we are not persuaded Petitioner has demonstrated a reasonable likelihood of prevailing on its assertion claims 1 12, 14 20, 22 27, and 29 are obvious over Saxe in combination with the Pigment Handbook, Sakoske, or Shepherd s Infrared Black 411 Documents, respectively. J. Claims 1 4: Asserted Ground Based on Morita Petitioner contends claims 1 4 are unpatentable under 35 U.S.C. 102 as being anticipated by Morita. Id. at Morita (Ex. 1005) Morita teaches an electrophoretic display liquid that includes particles, which reversibly changes its optical properties by applying an electric field. Ex. 1005, col. 1, ll Specifically, an electrophoretic display medium has a closed cell in which two substrates, at least one of which is transparent and at least one of which has an electrode, face each other. Id. at. col. 1, ll ; col. 5, ll The electrophoretic display liquid is contained between the two facing substrates. Id. at col. 5, ll Within the display liquid, hollow particles and pigment particles are dispersed in a dispersion medium. Id. at ll Inorganic materials, such as molybdate orange, cobalt chrome green, cobalt blue, zinc iron chrome brown, and copper chrome black. Id. at col. 7, ll Morita further 21

22 teaches the particle diameter of hollow particles is preferably from about 0.01 to about 100 mm, and more preferably from about 0.1 to about 10 mm. Id. at. col. 7, ll. 5 8; col. 8, ll Analysis Petitioner contends Morita discloses each limitation of claims 1 4, specifically, electrophoretic displays. Pet Petitioner argues Morita discloses inorganic anisometric MMO pigment particles. Pet. 57; Ex According to Petitioner, Morita teaches pigments, including molybdate orange, zinc iron, chrome brown, chrome green, cobalt chrome green, cobalt blue, cobalt aluminum, chrome blue, and copper chrome black, which are not perfectly spherical. Ex In response, Patent Owner argues the particles disclosed in Morita are described only as having a diameter; thus, the particles are not anisometric, but are instead, spherical. Prelim. Resp Furthermore, Patent Owner contends the alleged non-spherical shapes of the particles set forth by Dr. Chiang in her Declaration, are due to manufacturing methods. Id. at 19. We are not persuaded by Petitioner s argument. Morita does not describe particles having any other dimensions except diameter. Thus, we are not persuaded Morita anticipates anisometrically shaped particles as recited in claim 1. Accordingly, we are not persuaded Petitioner has demonstrated a reasonable likelihood of prevailing on its assertion claims 1 4 are anticipated by Morita. K. Claims 1 4: Asserted Ground Based on Morita 22

23 Petitioner contends claims 1 4 are unpatentable as obvious under 35 U.S.C. 103 over Morita. Pet As discussed above, Petitioner contends Morita anticipates the invention as recited in claims 1 4. Pet. 59. Petitioner further argues, even if Morita does not teach the claim limitation relating to average particle lengthy with sufficient specificity, the recited 50 nanometer to 1 micron range would have been obvious based on Morita. Id. However, Petitioner has not presented additional argument or evidence as to why it an ordinarily skilled artisan would have found Morita teaches anisometrically shaped particles or would have found it obvious to modify the particles to be anisometrically-shaped. Accordingly, we determine Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion claims 1 4 are unpatentable as obvious over Morita. III. CONCLUSION We conclude Petitioner has not demonstrated a reasonable likelihood of prevailing on the grounds of unpatentability asserted in the Petition. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted. 23

24 For PETITIONER: Edmund J. Walsh Gerald B. Hrycyszyn Wolf, Greenfield & Sacks, P.C. 600 Atlantic Ave. Boston, MA For PATENT OWNER: Mark A. Farley Max Moskowitz William O. Gray III Ostrolenk Faber LLP 1180 Avenue of the Americas New York, New York